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PATENTS  /V?' 


AND 

HOW  TO  OBTAIN  THEM 

TOGETHER    WITH 

A  SUMMARY  OF  PATENT  LAW 

BY 
FRANCIS      M.      WEIGHT 

** 

Attorney  at  Law  and  Registered  Solicitor  of  United  States 
and   Foreign   Patents 

Formerly   U.    S.   Patent   Office   Examiner 


Cop,nghted,    1898,   by   Francis   M.  Wright 

Copyrighted,    1900,   by  Francis   M.  Wright 

Copyrighted,    1906,    by  Francis   M.  Wright 

Cop/lighted,    1909,    by  Francis   M.  Wright 

Copyrighted,    1913,    by   Francis   M.  Wright 
EIGHTH    EDITION 


OFFICE 
Rooms  933-937  Monadnock  Bldg.,  Market  St.,  near  Third  St 

San  Francisco,  Cal. 
Telephone,   Kearny  2726 


BRANCH    OFFICE 
Rooms  56-61,   918  F   Street  N.  W.,   Washington,  D.  C. 


Mr.  Francis  M.  Wright  is  a  graduate  of  the  University 
of  Oxford,  England,  where  he  obtained  a  double  First 
Class  in  Mathematical  Honors.  He  was  afterwards  ap- 
pointed a  Professor  in  the  Institute  of  Technology  of 
the  City  of  London. 

In  1891  he  entered  the  U.  S.  Patent  Office  as  Assistant 
Examiner,  and  had  charge  of  important  classes  of  inven- 
tions in  the  Divisions  of  Metal  Working  and  Metallurgy. 
After  having  familiarized  himself  with  the  routine  of  the 
Patent  Office,  and  acquired  a  thorough  knowledge  of  Pat- 
ent Law  and  Practice,  he  entered  upon  the  profession  of 
Solicitor  of  Patents  at  Washington,  D.  C.,  and  practiced 
successfully  for  several  years  in  that  city,  where  he  still 
retains  a  branch  office. 

Mr.  Wright  has  repeatedly  and  successfully  prosecuted 
cases  before  every  division  and  every  tribunal  of  the  Pat- 
ent Office,  and  is  accurately  acquainted  with  every  detail 
of  its  working. 


PATENTS  AND  HOW  TO  OBTAIN  THEM 


The  Foundation  of  the  Patent  Laws 

of  the  United  States  is  found  in  Article  I,  Sec- 
tion 8,  of  the  Constitution,  which  provides  that 
Congress  shall  have  power  to  promote  the  prog- 
ress of  science  and  useful  arts  by  securing  for 
limited  times  to  inventors  the  exclusive  right  to 
their  respective  discoveries. 

The    Principal    Enactment   of   Congress 

in  accordance  with  this  provision  of  the  Constitu- 
tion is  Section  4886  of  the  U.  S.  Revised  Statutes, 
which,  as  now  amended,  is  as  follows: 

Any  person  who  has  invented  or  discovered  any 
new  and  useful  art,  machine,  manufacture,  or  com- 
position of  matter,  or  any  new  and  useful  improve- 
ments thereof,  not  known  or  used  by  others  in  this 
country  before  his  invention  or  discovery  thereof, 
and  not  patented  or  described  in  any  printed  pub- 
lication in  this  or  any  foreign  country  before  his 
invention  or  discovery  thereof  or  more  than  two 
years  prior  to  his  application,  and  not  patented  in 
a  country  foreign  to  the  United  States  on  an  ap- 
plication filed  more  than  twelve  months  before 
his  application,  and  not  in  public  use  or  on  sale  in 
this  country  for  more  than  two  years  prior  to  his 
application,  may,  upon  payment  of  the  fees  re- 
quired by  law,  and  other  due  proceedings  had,  ob- 
tain a  patent  therefor. 

The   Subjects  of  Patents 

are  therefore  seen  to  be,  (1)  an  art,  (2)  a  ma: 
chine,  (3)  a  manufacture,  (4)  a  composition  of 
matter,  or  (5)  any  new  and  useful  improvement 
of  these.  A  sixth  class  comprises  Design  patents, 


PATENTS  AND  HOW  TO  OBTAIN  THEM. 


which,  by  authority  of  a  separate  Section  are 
granted  for  a  term  of  3%  years,  7  years,  or  14 
years,  as  may  be  desired,  for  any  new  design, 
shape  or  pattern  of  any  article  of  manufacture. 

An   Art 

(method,  or  process),  is  a  mode  of  treatment  of 
certain  materials  to  produce  a  given  result.  A 
good  example  of  a  patentable  art  was  Goodyear's 
process  of  vulcanizing  rubber,  which  consisted  in 
mixing  crude  India  rubber  with  sulphur  and 
then  subjecting  the  mixture  to  a  high  degree  of 
heat.  In  order  to  be  patentable,  the  act,  or  series 
of  acts,  constituting  the  art  or  process  in  ques- 
tion must  be  capable  of  being  conceived  or  imag- 
ined apart  from  any  special  form  of  machine  em- 
ployed for  performing  such  act  or  acts.  In  Corn- 
ing v.  Burden,  it  was  held  that  a  process  of  con- 
verting puddler's  balls  into  blooms,  by  continuous 
pressure  and  rotation  of  the  balls  between  con- 
verging surfaces,  was  not  a  patentable  process,  as 
it  was  merely  the  operation  of  the  machine,  merely 
the  use  of  certain  mechanism. 

A  Principle 

or  law  of  nature,  cannot  be  patented.  Thus  Morse's 
eighth  claim  was  declared  invalid  by  the  U.  S.  Su- 
preme Court,  as  it  was  substantially  a  claim  for 
the  use  of  the  electric  current  for  making  signs 
at  a  distance.  A  claim  for  the  manner  or  method 
by  which  the  electric  current  was  so  employed, 
however  broad,  would  have  been  valid. 

A  Machine 
is    a    combination    of    moving    mechanical    parts 


PATENTS  AND  HOW  TO  OBTAIN  THEM.     7 

adapted  to  receive  motion,  and  to  apply  it  to  the 
production  of  some  mechanical  result.  A  machine 
is  patentably  new  when  its  principle  of  operation  is 
new,  and  two  machines  are  substantially  the  same 
when  their  principles  of  operation  are  the  same. 


• 


A  Manufacture 


is  a  very  comprehensive  title  and  includes  every 
article  devised  by  man,  not  a  machine,  a  compo- 
sition of  matter,  or  a  design. 

A  Composition  of  Matter 

includes  all  compositions  of  two  or  more  sub- 
stances, either  mechanically  or  chemically  mixed, 
either  fluid  or  solid. 

Improvements 

on  all  the  above  are  also  patentable.  A  patent  on 
an  improvement  may  be  obtained  whether  the 
matter  improved  upon  has  been  patented  or  not, 
and  though  there  may  be  an  unexpired  patent 
therefor.  But  a  patent  on  an  improvement  on  a 
patented  device  does  not  confer  on  the  improver 
a  right  to  use  the  original  device.  Nor  can  the 
patentee  of  the  original  device  use  the  patented 
improvement  without  the  consent  of  the  improver. 
Each  has  the  monopoly  of  his  own  invention. 

Designs 

differ  from  the  foregoing  subjects  of  mechanical 
patents  in  that  they  have  reference  to  appearance 
only.     The  object  of  patents  for  designs  is  to  en- 
courage the  arts  of  decoration. 
A  design  is  sufficiently  novel  to  be  patentable, 


8          PATENTS    AXD    HOW    TO    OBTAIN    THEM. 

if  it  can  be  distinguished  from  prior  designs  by 
an  ordinary  observer,  giving  such  attention  as  a 
purchaser  usually  gives. 

Under  the  ruling  of  Commissioner  Butterworth, 
in  ex  parte  Traitel,  the  color  of  a  design  or  the 
material  of  whicn  it  is  made  are  of  no  importance 
in  distinguishing  the  design,  but  the  design  relates 
solely  to  form  and  configuration. 

The  Products  of  Invention 

alone  are  patentable.  Not  all  improvement  is  pat- 
entable,  but  only  such  as  is  produced  by  the  exer- 
cise of  the  inventive  faculties. 

It  is  not  invention  to  make  an  improvement 
which  any  skilled  mechanic  would  produce  when- 
ever required. 

It  is  not  invention  to  produce  an  article  which 
differs  from  some  older  thing-  only  in  excellence 
of  workmanship;  or,  in  general,  to  substitute 
superior  for  inferior  materials,  as,  for  instance, 
to  substitute  clay  door  knobs  for  wooden  and 
metallic  ones. — Hotchkiss  v.  Greenwood.  It  is  not 
invention  to  enlarge  a  machine  so  that  it  will  do 
heavier  work  than  before.  Thus,  it  being  old  to 
cut  lath  with  a  small  circular  saw,  a  patent  for  a 
circular  saw  for  cutting  logs  was  declared  void. — 
Phillips  v.  Page. 

It  is  not  invention  to  change  the  degree  of  a 
thing;  thus,  pulverized  glue  was  declared  not  a 
patentable  improvement  on  flake  glue. — Glue  Co. 
v.  Upton. 

To  collect  in  one  article  a  number  of  good  fea- 
tures, scattered  through  sundry  prior  devices, 
although  constituting  an  article  much  superior 
to  any  before  made,  is  not  invention. — Hailer  v. 
Van  Wormer.  For  the  same  reason,  in  Recken- 


PATENTS  AND  HOW  TO  OBTAIN  THEM.     9 

dorfer  v.  Faber,  it  was  held  that  it  did  not  amount 
to  invention  to  unite  a  piece  of  soft  rubber  to  the 
end  of  a  lead  pencil,  and  this  article  was  declared 
not  patentable. 

It  is  not  invention  to  omit  a  part  of  a  device, 
unless  the  remaining  parts  thereby  act  in  a  dif- 
ferent way.  It  is  not  invention  to  use  an  old  thing 
for  a  new  purpose;  if,  however,  a  change  of  con- 
struction is  made  at  the  same  time  with  the 
change  of  use,  there  may  be  invention. 

In  doubtful  cases  the  rule  in  Smith  v.  The  Den- 
tal Vulcanite  Co.  may  be  applied,  namely:  The 
fact  of  a  device  having  gone  into  general  use  and 
having  displaced  other  devices  which  had  previ- 
ously been  employed  for  analogous  purposes  will 
generally  establish  that  the  device  involves  a  pat- 
entable invention. 


Novelty 

is  a  pre-requisite  of  patentability.  The  invention 
must  be  "new,"  not  known  or  used  by  others  in 
this  country,  and  not  patented  or  described  in  any 
printed  publication  in  this  or  any  foreign  country, 
before  the  applicant's  invention  or  discover} 
thereof. 

An  invention  may  be  patentably  novel,  although 
known  and  used,  prior  to  the  act  of  invention,  by 
persons  in  foreign  countries,  provided  that  it  was 
not,  in  such  foreign  countries,  described  in  a 
printed  publication.  A  published  drawing  alone 
would  be  a  sufficient  description  to  anticipate  an 
invention.  Such  description,  however,  must  be 
sufficiently  full  to  enable  a  person,  skilled  in  the 
art  to  which  the  invention  belongs,  to  practice 
the  invention. 

Novelty   is   not   negatived   by   the   existence   of 


10        PATENTS    AND    HOW    TO    OBTAIN    THEM. 

another  person's  prior  unpublished  drawings  of 
the  invention,  or  of  a  model,  or  of  an  abandoned 
application  therefor. 

A  thing  may  be  novel,  even  though  every  part 
of  it  is  old,  provided  these  old  parts  co-act  with 
each  other,  and  produce  by  their  union  a  result 
not  performed  by  each  part  separately.  But  it 
they  do  not  do  this  the  assemblage  is  not  patent- 
able. 

The    Date   of    Invention 

may  often  be  a  matter  of  great  importance.  An 
invention  dates  from  the  completion  of  a  model 
or  drawing  clearly  showing  the  invention  or  from 
the  complete  disclosure  of  the  invention  to  other 
parties. 

A    Patent  Once   Granted 

if  attacked  upon  the  ground  of  the  existence  of 
the  device  prior  to  the  patentee's  invention,  will 
only  be  overthrown  upon  evidence  establishing  the 
alleged  existence  beyond  a  doubt. 

Utility 

is  a  necessary  quality  of  a  patentable  invention. 
The  device  must  be  capable  of  producing  a  result, 
and  the  result  must  be  a  useful  one. 

If  an  application  is  made  for  a  patent  on  a 
machine,  the  drawing  or  description  of  which 
shows  that  the  machine  will  not  work  as  intended, 
the  invention  will  be  rejected  for  lack  of  utility, 
for  "imperativeness."  An  application  for  a  "per- 
petual motion"  machine  will  always  be  rejected 
for  this  reason,  and  the  applicant  will  be  required 
to  provide  a  working  model  to  substantiate  his 
claim. 

Also  the  result  must  be  a  useful  one.    A  device, 


PATENTS    AND    HOW    TO    OBTAIN    THEM.         11 

the  function  of  which  is  necessarily  injurious  to 
morals,  or  health,  or  public  order,  cannot  be  pat- 
ented. But  a  device  which  can  be  used  in  a  bene- 
ficial manner,  although  it  can  also  be  used  in  a 
harmful  manner,  is  patentable. 

The  very  smallest  amount  of  utility  is  sufficient 
to  support  a  patent. 


Public  Use 

of  the  invention  for  more  than  two  years  prior  to 
filing  the  application  will  be  a  bar  to  a  patent  for 
the  invention.  By  public  use  is  meant  any  use  of 
the  invention  by  other  persons  generally,  with  or 
without  the  consent  of  the  inventor.  If  an  in- 
ventor permits  the  invention  to  be  used  by  the 
public  for  this  length  of  time  without  applying  for 
a  patent,  he  is  presumed  to  have  waived  or  aban- 
doned his  right  to  a  monopoly  therein.  But  an 
experimental  use,  for  the  purpose  of  testing  the 
qualities  of  the  invention,  is  not  public  use.  In 
Elizabeth  v.  Pavement  Co.,  it  was  held  that  the 
use  of  an  improved  street  pavement  on  a  public 
highway  for  more  than  two  years,  made  to  test 
its  utility,  was  not  a  public  use  within  the  mean- 
ing of  the  Statute. 

The  act  of  putting  the  invention  on  sale  for 
more  than  two  years  prior  to  the  application  will 
also  bar  a  patent.  A  single  sale,  of  a  single  arti- 
cle, to  a  single  person,  is  sufficient,  as  is  also  the 
mere  offering  or  exposing  for  sale.  A  sale  "to  see 
if  it  will  sell,"  more  than  two  years  before  filing 
the  application,  is  abandonment,  but  a  sale  "on 
trial"  for  the  purpose  of  testing  the  invention,  is 
not  abandonment. 


12         PATENTS     AND     HOW     TO     OBTAIN     THEM. 


Abandonment 

of  an  invention  may  also  occur  in  other  ways  than 
by  two  years'  public  use  or  sale,  as  by  an  express 
declaration  of  abandonment,  or  by  lack  of  dili- 
gence of  the  inventor  in  securing  his  rights,  which 
negligence  may  be  evidenced  by  long  delay  in 
filing  the  application.  But  such  long  delay  may 
be  excused  by  extreme  poverty,  mental  or  physi- 
cal, disorder,  or  other  prevailing  cause. 

Prior   Foreign    Patents. 

Under  the  present  law,  the  inventor  who  has 
obtained  a  foreign  patent,  will  not  thereby  be 
prevented  from  obtaining  a  U.  S.  patent  for  the 
same  invention,  provided  he  files  his  application 
within  twelve  months  after  the  filing  of  the  appli- 
cation for  the  foreign  patent.  The  term  of  the 
U.  S.  patent  is  now  no  longer  limited  by  the  term 
of  a  foreign  patent  previously  granted. 

An  Application  for  a  Patent 

comprises  (1)  a  petition,  (2)  a  specification,  (3) 
an  oath,  (4)  payment  of  fifteen  dollars,  (5)  one 
or  more  sheets  of  drawings,  when  the  nature  of 
the  case  admits  of  drawings. 

Only  in  complicated  machines,  the  construction 
of  which  cannot  well  be  understood  from  the 
drawings,  are  models  now  called  for.  Specimens 
of  compositions  are  occasionally  required  to  be 
filed.  Unless  called  for,  models  or  specimens 
should  not  be  filed  with  the  application;  but  it 
sometimes  happens  that  models  or  specimens, 
although  not  absolutely  required  by  the  Examiner, 
may  be  of  service  in  the  prosecution  of  the  case 
to  show  the  merit  of  the  invention.  If  so,  they 
may,  with  the  permission  of  the  Examiner,  be 


PATENTS    AND    HOW    TO    OBTAIN    THEM.         13 

filed  as  an  exhibit,  and  will  then  be  returned  to 
the  applicant  on  the  determination  of  the  applica- 
tion. 

The   Petition 

must  be  signed  by  the  actual  inventor;  it  must  be 
addressed  to  the  Commissioner  of  Patents,  state 
the  name  and  residence  of  the  applicant,  desig- 
nate by  title  the  invention  sought  to  be  patented, 
and  contain  a  reference  to  the  specification  for  a 
full  disclosure  of  the  invention. 

The  Specification 

compiises  seven  parts:  (1)  The  preamble,  giving 
the  name  and  address  of  the  applicant,  the  title 
of  the  invention,  and  the  name  of  any  foreign 
country  in  which  the  invention  has  been  patented, 
and  the  details  thereof;  (2)  a  general  statement 
of  the  nature  and  object  of  the  invention;  (3)  a 
brief  description  of  the  several  figures  of  the 
drawings,  showing  what  each  figure  thereof  repre- 
sents; (4)  a  detailed  description  of  the  invention, 
explaining  fully  its  construction,  and  mode  of 
operation;  (5)  the  claim  or  claims;  (6)  the  signa- 
ture of  the  inventor;  (7)  the  signatures  of  two 
witnesses. 

The  Detailed  Description  must  be  sufficiently 
full,  clear,  concise  and  exact,  to  enable  any  per- 
son skilled  in  the  art  or  science  to  which  it  apper- 
tains, or  with  which  it  is  most  nearly  connected, 
to  make  and  use  the  invention,  if  it  is  a  machine 
or  manufacture,  or  to  compound  the  invention,  if 
it  is  a  composition  of  matter,  or  to  perform  the 
invention,  if  it  is  a  process.  If  the  description 
does  not  do  this,  the  patent,  if  granted,  will  be 


14        PATENTS    AND    HOW    TO    OBTAIN    THEM. 

void.     The    reason    for   this   is    obvious    from    the 
nature  of  a  patent. 

A  Patent  is  a  Contract  between  the  inventor 
and  the  public,  by  which  the  inventor,  in  consid- 
eration that  the  exclusive  use  of  his  invention  is 
secured  to  him  for  a  limited  period  of  time,  con- 
fers upon  the  public  full  knowledge  of  the  inven- 
tion, so  that  it  shall  be  able  to  use  the  invention  af- 
ter the  expiration  of  that  period.  Now,  if  the  inven- 
tor does  not  so  place  the  invention  fully  within 
the  knowledge  of  the  public,  it  is  evident  that  he 
has  not  performed  his  part  in  the  contract,  and 
his  patent  is  void  for  lack  of  consideration. 

Theoretical  Principles,  however,  underlying  a 
process  or  other  invention,  need  not  be  stated, 
as  they  are  not  necessary  to  enable  the  public 
to  practise  the  invention.  They  may  not  even  be 
understood  by  the  inventor  himself.  Yet  in  the 
prosecution  of  an  application  for  a  novel  process, 
presenting  unexpected  results,  it  may  often  be 
very  desirable  to  be  able  to  propound  a  theory  of 
operation  accounting  for  the  observed  results, 
should  the  Examiner  be  skeptical  as  to  the  opera- 
tiveness  of  the  process  claimed  to  be  novel. 

No  Argument  as  to  the  merits  of  the  inven- 
tion should  be  inserted  in  the  description,  except 
such  as  is  absolutely  necessary  to  set  forth  the 
utility  of  the  invention.  In  particular,  it  is  not 
permitted  to  disparage  competing  inventions  in 
specific  terms. 

Persons  Skilled  in  the  Art  are  the  class  to 
whom  the  description  must  be  intelligible.  A 
description  of  a  loom  must  be  intelligible  to 
weavers,  of  a  dynamo  to  electric  engineers,  etc. 

A    False   Suggestion    is    Fatal.     The   inventor  is 


PATENTS    AND    HOW    TO    OBTAIN    THEM.         15 

bound  to  keep  faith  with  the  public.  If  for  the 
purpose  of  misleading  them,  he  states  less  than 
the  whole  truth,  or  asserts  that  things  are  neces- 
sary to  produce  the  desired  effect  when  he  knows 
that  they  are  not  so,  the  patent  will  be  void. 
Such  wilful  fraud  is,  however,  never  presumed, 
but  must  be  established  by  direct  or  circumstan- 
tial evidence. 

The  Claim 

is  the  life  of  the  patent,  and  by  it  the  letters 
patent  must  stand  or  fall.  The  thing  patented  is 
the  thing  claimed;  the  Courts  will  not  go  into 
the  history  of  the  art  to  determine  what  the 
patentee  really  invented  and  might  have  claimed; 
and  though  he  may  have  actually  invented  much 
more  than  he  has  claimed,  his  monopoly  will  only 
be  that  which  he  has  claimed. 

A  claim  must  correspond  with  the  description; 
must  not  be  functional,  that  is,  cover  a  mere  result, 
instead  of  covering  the  means  by  which  the  result 
is  attained;  must  not  be  alternative,  that  is,  must 
not  cover  two  different  constructions  by  language 
applied  separately  to  each;  and  claims  must  not 
be  multiplied,  so  as  to  define  the  invention  by  a 
number  of  claims,  which  all  mean  the  same  thing. 

Genus  and  Species  claims  may  be  presented  on 
the  same  invention,  the  generic  claim  defining 
the  invention  with  sufficient  breadth  to  include 
all  of  a  family  or  group  having  the  essential  char- 
acteristics of  the  invention  claimed,  while  specific 
claims  cover  only  those  constructions  specifically 
referred  to  in  the  claim.  But  only  one  species 
of  any  patentable  construction  or  combination 
may  be  claimed  in  a  single  application,  although 


16         PATENTS    AND     HOW     TO     OBTAIN    THEM. 

it  may  be  claimed  both  specifically  and  broadly. 
Different  inventions  may  be  claimed  in  the  same 
application,    when    they    are    mutually    dependent 
and  contribute  to  a  single  result. 

The  Oath. 

The  applicant  must  make  oath  that  he  verily 
believes  himself  to  be  the  first  inventor  of  the 
invention  for  which  he  solicits  a  patent,  as  well 
as  to  the  fulfillment  of  the  other  conditions  of  Sec. 
4886,  Rev.  Stat. 

The   Drawing 

must  be  prepared  with  great  care,  as  the  require- 
ments of  the  Patent  Office  are  very  exacting.  The 
drawing  must  show  every  feature  referred  to  in 
the  specification  as  forming  a  part  of  the  inven- 
tion; on  the  other  hand,  when  a  modification  of 
the  invention  is  not  covered  by  any  claim,  it  must 
not  appear  on  the  drawing. 

Deceased    Inventor. 

In  case  of  the  death  of  the  inventor  before  the 
application  is  filed,  the  application  may  be  made 
by  his  legal  representatives. 

Examination  of  the  Application. 

The  application,  having  been  filed  in  the  Pat- 
ent Office,  complete  in  all  its  five  parts,  is  given 
the  date  of  filing  and  a  serial  number,  the  present 
series  having  been  begun  in  1900.  Acknowledg- 
ment of  the  filing  is  mailed  to  the  applicant  or 
his  attorney,  and  the  application  is  sent  to  some 
one  of  40  examining  divisions,  according  to  the 
subject  matter  of  the  invention.  Here  it  must 
await  its  turn  before  undergoing  examination,  the 


PATENTS    AND    HOW    TO     OBTAIN    THEM.         17 

applications  in  each  division  being  taken  up  for 
action  in  the  order  of  filing,  which  may  be  in  from 
one  to  ten  months. 

The  Official  Search. 

When  the  application  is  reached,  the  Exam- 
iner will  proceed  to  make  a  search  among  prior 
patents,  and,  if  necessary,  books  and  publications, 
to  determine  whether  the  claims  presented  should 
be  allowed.  For  this  purpose,  the  prior  United 
States  and  foreign  patents,  over  2,000,000  in  num- 
ber, are  extensively  classified  and  are  distributed 
among  the  different  divisions. 

If  the  Examiner  finds  that  any  claim  of  the  < 
application  should  be  rejected,  the  applicant  will 
be  notified  of  such  rejection  and  of  the  reasons 
therefor,  and  such  information  will  be  given  as 
may  be  useful  in  judging  of  the  propriety  of  prose- 
cuting the  application  or  amending  the  claim. 

Amendments   and   Actions   by  Applicants. 

The  applicant  has  the  right  to  amend  the  speci- 
fication either  before  or  after  the  first  rejection 
or  action;  and  he  may  amend  as  often  as  the 
Examiner  presents  new  reasons  for  rejection. 
Should  the  applicant  consider  that  the  rejection 
by  the  Examiner  is  erroneous,  he  will  request  a 
reconsideration  of  his  action,  pointing  out  the 
supposed  error  therein,  and  the  patentable  novelty 
of  the  claim  or  claims  rejected.  If  the  applicant 
prefers  this  request  for  a  reconsideration  without 
substantially  amending  his  claim,  and  the  Exam- 
iner repeats  his  objection  on  the  same  ground  as 
before,  and  without  advancing  new  reasons  for 
his  rejection,  the  second  rejection  is  final,  and  the 
applicant's  remedy  is  by  appeal. 


18        PATENTS    AND    HOW    TO    OBTAIN    THEM. 

At  any  time  before  final  rejection,  however,  the 
applicant  may  amend  his  claim  or  claims  so  re- 
jected, and  will  then  be  entitled  to  consideration 
of  the  same,  and  a  first  rejection  thereof.  A  final 
rejection  will  only  be  given  when  a  request 
for  reconsideration  is  made  without  an  amend- 
ment. 

New    Matter    Inadmissible. 

An  applicant  is  not  permitted  to  introduce  into 
the  specification  or  drawing,  when  once  filed,  any 
new  matter,  that  is,  matter  which  was  not  shown 
in  either  the  drawing  or  the  specification  as  origi- 
nally filed.  And  this  is  the  case,  even  although 
the  matter  sought  to  be  inserted  formed  a  part  of 
his  original  invention,  and  was  omitted  from  his 
application  by  inadvertence.  When  new  matter 
is  sought  to  be  introduced,  it  can  only  be  done  by 
filing  a  new  application. 

Progress  of  the  Case. 

After  each  amendment  by  the  applicant,  or 
request  for  reconsideration,  the  case  will  await 
its  turn  with  other  cases  in  like  condition  before 
the  same  Examiner.  This  period  will  be  from  one 
to  ten  weeks;  on  an  average  about  four  weeks. 
Should  the  amendment  present  a  new  feature,  or 
restrict  the  claims,  the  Examiner  will,  if  neces- 
sary, make  a  further  search,  and  either  allow  or 
reject  the  amended  claims.  This  process  of 
amendment,  or  request  for  reconsideration,  by 
the  applicant,  and  rejection  or  allowance  by  the 
Examiner,  will  be  continued  until  either  all  the 
claims  are  allowed,  or  some  are  allowed  and  some 
finally  rejected,  or  all  are  finally  rejected.  When 
claims  are  finally  rejected  which  the  applicant's 


PATENTS    AND    HOW    TO    OBTAIN    THEM.         19 

attorney  deems  to  be  allowable  (which,  however, 
happens  infrequently),  either  the  Examiner  or  the 
attorney  holds  an  erroneous  opinion,  and  this 
question  is  a  proper  subject  for  an  appeal. 

Appeals. 

Appeal  to  the  Board  of  Examiners-in-Chief  may 
be  taken  from  an  action  of  the  Examiner  finally 
rejecting  one  or  more  claims.  The  Government 
fee  for  this  appeal  is  $10.  This  Board  of  Appeal 
consists  of  three  members,  whose  office  it  is  thus 
to  revise  and  control  adverse  judgments  of  the 
Examiners  when  brought  up  to  them  on  appeal. 
From  an  adverse  decision  of  the  Examiners-in- 
Chief  an  appeal  may  be  taken  to  the  Commissioner 
in  person  (appeal  fee  $20),  and  from  the  Commis- 
sioner an  appeal  may  be  taken  to  the  Court  of 
Appeals  of  the  District  of  Columbia,  whose  de- 
cision is  final. 

Unless  the  applicant  decides  to  appeal  on  the 
finally  rejected  claims,  and  in  case  he  appeals 
and  the  rejection  is  sustained  on  appeal,  he  will 
be  required  to  cancel  the  rejected  claims  before 
the  application  can  be  passed  on  the  allowed 
claims. 

Notice  of  Allowance  will  then  be  mailed  to 
him,  and  then  it  will  only  be  necessary  to  pay 
the  final  Government  fee  of  $20.  This  may  be 
paid  any  time  within  six  months  after  notice  of 
allowance,  thus  giving  him  time  to  make  appli- 
cation for  foreign  patents,  if  he  so  desires. 

Abandoned  Applications. 

All  applications  must  receive  proper  action  by 
the  applicant  within  one  year  after  action  thereon 


20        PATENTS    AND    HOW    TO    OBTAIN    THEM. 

by  the  Patent  Office,  otherwise  the  application  will 
be  held  to  have  been  abandoned. 

Interferences. 

An  interference  is  a  proceeding  instituted  by 
the  Patent  Office  to  determine  which  of  two 
parties,  claiming  the  same  patentable  invention, 
is  the  real  inventor  thereof.  The  fact  that  one 
of  the  parties  has  already  obtained  a  patent  will 
not  prevent  an  interference,  for,  although  the 
Commissioner  has  no  power  to  cancel  or  revoke 
a  patent,  he  may  grant  another  patent  for  the 
same  invention  to  a  person  who  proves  to  be  the 
prior  inventor. 

In  the  determination  of  an  interference,  it  is 
not  always  the  first  inventor  to  whom  the  award 
of  priority  is  given,  but  it  is  the  party  who  can 
prove  that  he  was  the  first  inventor.  Inventors 
should  remember  this  fact,  and  should,  as  soon 
as  possible  after  their  conception  of  the  invention, 
make  sketches  of  the  same,  show  them  to  friends 
whom  they  can  trust,  and  obtain  the  signatures 
of  such  persons,  with  the  date.  They  will  thus 
be  able  to  establish  the  conception  of  the  inven- 
tion at  an  early  date. 

Reduction  to   Practice. 

There  are  two  main  epochs  in  the  production 
of  an  invention.  The  first  is  the  conception  of 
the  invention  in  the  mind  of  the  inventor;  the 
second  is  the  actual  embodiment  of  the  invention. 
The  latter  is  called  Reduction  to  Practice.  Actual 
reduction  to  practice  consists  in  the  construction 
of  the  actual  thing  invented,  of  dimensions  suit- 
able for  practical  use,  and,  in  case  of  any  doubt 
of  the  practical  operativeness  of  the  device,  it 
must  have  been  tried  sufficiently  to  establish  its 


PATENTS    AND    HOW    TO    OBTAIN    THEM.        21 

practicability.     A  model,  no  matter  how  complete 
in  detail,  is  not  sufficient. 

Constructive  Reduction  to   Practice, 

An  invention  will,  however,  be  held  to  be 
completed  by  the  filing  in  the  Patent  Office  of  an 
application  clearly  disclosing  the  invention  and 
claiming  the  same.  This  is  called  a  Constructive 
Reduction  to  Practice,  and  is  a  completion  of  the 
invention  just  as  much  as  would  be  the  embodi- 
ment of  the  invention  in  an  actual  reduction. 

Priority   of    Invention. 

Where  there  are  two  independent  inventors,  the 
rule  is  that  the  first  to  conceive  the  invention  is 
considered  to  be  the  first  inventor,  if  he  is  reason- 
ably diligent  in  reducing  to  practice.  But  if  he 
is  not  diligent,  and  the  later  to  conceive  reduces 
to  practice  first,  then  the  latter  is  the  first  in- 
ventor. 

Re-Issues. 

A  patent,  after  issue,  may  be  found  to  be  defec- 
tive, most  commonly  by  reason  of  the  claims  not 
being  broad  enough  to  adequately  cover  the  actual 
invention.  The  remedy  for  this  is  by  a  surrender 
of  the  original  patent  and  a  re-issue  of  the  same 
with  broader  claims. 

Such  re-issue  should  be  applied  for  as  soon  as 
possible  after  the  discovery  of  the  defects  sought 
to  be  remedied.  In  case  of  delay,  and  if  other 
rights  have  arisen  in  the  meantime,  the  re-issue 
will  be  refused.  The  Government,  fee  for  a  re- 
issue is  $30. 

On   the   Choice   of  an   Attorney. 
Too  much  care  cannot  be  exercised  in  the  selec- 


22    PATENTS  AND  HOW  TO  OBTAIN  THEM. 

tion  of  an  attorney  to  prepare  and  prosecute  an 
application  for  a  Patent. 

If  the  invention  is  sufficiently  valuable  to  pat- 
ent at  all,  a  good  patent  should  be  procured, 
one  which  will  afford  thorough  and  complete  pro- 
tection. Otherwise,  the  inventor  will  find,  when 
he  attempts  to  sustain  his  monopoly,  that  not 
only  has  the  money  spent  in  procuring  the  patent 
been  wasted,  but  the  invention  itself  is  lost.  It  is 
true  that  the  invention  may  sometimes  be  saved 
by  a  re-issue  of  the  patent,  but  in  many  instances 
this  cannot  be  done,  and  in  any  case  the  pecuniary 
loss  is  considerable. 

The  procurement  of  sufficiently  broad  claims  is 
the  especial  province  of  the  attorney.  It  is  no 
part  of  the  duty  of  the  Patent  Office  to  see  that 
the  applicant  obtains  claims  as  broad  as  the 
invention  merits.  Its  duty  is  to  the  public  in 
general,  to  see  that  the  inventor  is  not  granted 
claims  broader  than  are  warranted.  A  conscien- 
tious attorney  has  often  the  greatest  difficulty  and 
labor  in  obtaining  the  allowance  of  sufficiently 
broad  claims. 

Inventors  who  have  had  experience  in  the  sale 
of  patents  for  their  inventions  know  full  well  the 
importance  of  the  character  of  the  claims  which 
they  have  obtained.  But  inventors  who  have  not 
had  such  experience  are  generally  in  ignorance 
on  this  point.  They  imagine  that  if  they  get  A 
PATENT  that  is  enough.  This  is  not  so. 

The  value  of  a  patent  depends  entirely  on  the 
value  of  the  claims  obtained.  Many  patents,  ob- 
tained by  careless  or  incompetent  attorneys,  con- 
tain claims  so  worthless  that  it  would  be  ridicu- 
lous to  even  attempt  upon  such  patents  to  enjoin 
the  use  of  the  invention  supposed  to  be  protected 


PATENTS    AND    HOW     TO    OBTAIN    THEM.         23 

by  the  patent.  And  even  if  the  patent  has  been 
obtained  by  a  reputable  attorney,  it  is  only  by  the 
employment  of  care,  skill,  and  experience  that  the 
invention  is  properly  protected. 

It  is  generally  better  for  the  inventor  to  em- 
ploy an  attorney  whom  he  can  visit  personally, 
if  necessary.  The  Patent  Agencies  at  Washing- 
ton, D.  C.,  New  York  and  Philadelphia,  who  adver- 
tise so  extensively  in  newspapers  throughout  the 
entire  country,  are  many  of  them  not  safely  to  be 
trusted.  A  very  considerable  portion  of  the  fee 
paid  by  the  inventor  to  these  agencies  goes  for 
advertising,  and  the  remainder  would  not  be  a 
sufficient  compensation  for  good  work  put  upon 
the  case  by  a  man  of  ability  and  experience. 

The  work  is,  as  a  matter  of  fact,  generally  done 
by  underpaid  clerks,  who  are  merely  learning 
their  profession,  and  who  do  not  know  how  to 
obtain  a  good  patent,  even  if  they  were  permitted 
to  spend  the  time  on  each  case  necessary  to  do  so. 

The  sole  object  is  to  push  the  case  through  as 
fast  as  possible,  and  to  get  a  patent,  any  kind,  so 
long  as  it  is  a  patent.  Thus  it  is  that  so  many 
patents  are  worthless,  and  the  unfortunate  pat- 
entee blames  the  Patent  System  for  giving  him  a 
patent  that  does  not  protect  him.  It  is  not  the 
system  that  is  at  fault,  but  his  own  imprudence 
or  inexperience  in  the  appointment  of  an  attor- 
ney. 

Some  of  these  agencies  take  advantage  of  this 
ignorance  on  the  part  of  the  inventor  by  offering 
the  alluring  inducement,  "No  patent,  no  pay." 
The  inventor  gets  a  patent,  that  is,  he  gets  some 
sheets  of  paper,  a  blue  ribbon,  and  a  seal,  but 
does  he  get  proper  protection  for  his  invention? 
He  is  decidedly  fortunate  if  he  does. 


24        PATENTS    AND    HOW    TO    OBTAIN    THEM. 

A  personal  visit  to  the  attorney  is  often  desir- 
able in  many  ways.  The  local  attorney  can  often 
assist  the  inventor  in  working  out  the  details  of 
the  invention,  and  can  aid  the  inventor  in  other 
ways  that  will  readily  suggest  themselves,  and 
that  an  attorney  at  a  distance  could  not  so  well 
do.  Many  serious  errors  are  liable  to  occur  when 
the  nature  of  the  invention  is  communicated  by 
correspondence.  A  feature  of  the  invention  may 
be  entirely  overlooked,  or  more  importance,  or 
less,  may  be  attached  to  it  by  the  attorney  than 
in  reality  belongs  to  it. 

A  skilled  and  experienced  Patent  Attorney  can 
conduct  the  case  as  well  at  a  distance  as  he  can 
at  Washington,  D.  C.  He  understands  the  reasons 
for  the  Examiner's  actions,  without  the  necessity 
of  interviewing  the  Examiner,  and  can  make  the 
appropriate  amendment  or  reply  by  letter. 

In  the  beginning  of  this  pamphlet  will  be  found 
a  brief  statement  of  the  author's  qualifications  as 
a  Solicitor  of  Patents.  These  qualifications  are 
not  excelled  on  this  coast. 

To  have  been  an  Examiner  in  the  Patent  Of- 
fice is  a  decided  advantage  to  a  practising  Patent 
Attorney.  It  enables  him  to  realize  the  precise 
mental  attitude  taken  by  an  Examiner  in  his 
treatment  of  any  case,  to  see  the  reasonableness 
of  the  Examiner's  action,  or  where  the  Exam- 
iner has  failed  to  perceive  the  merit  of  the  in- 
vention, and  to  prosecute  the  case  accordingly 
with  the  least  possible  friction,  and  with  the 
best  results  in  securing  a  good  patent. 

This  advantage  has  in  my  case  been  enhanced 
by  the  experience  gained  as  a  Patent  Attorney 
at  the  National  Capital,  which  has  brought  me 


PATENTS    AND    HOW    TO    OBTAIN    THEM.        25 

into  personal  contact  with  all  the  officials  of  the 
Patent  Office,  and  thoroughly  familiarized  me 
with  its  entire  routine. 


Rejected  Cases. 

Many  valuable  inventions  are  buried  among 
the  rejected  applications  in  the  Patent  Office,  for 
which  patents  might  be  obtained.  I  have  been 
remarkably  successful  in  procuring  patents  for 
such  inventions,  which  had  been  given  up  as  hope- 
less by  other  attorneys. 


The  Cost  of  a  Patent. 

The  Government  fees  on  an  application  for  a 
patent  are  $35.00.  Of  this  sum,  however,  only 
$15.00  is  payable  on  filing  the  application,  the  re- 
maining $20.00  being  payable  when  the  applica- 
tion is  allowed  by  the  Patent  Office,  or  at  any 
time  within  six  months  after  such  notice  of  allow- 
ance. When  the  final  Government  fee  of  $20.00 
has  been  paid,  the  patent  will  issue  about  four 
weeks  afterwards.  Should  the  applicant  fail  to 
pay  the  final  Government  fee  of  $20.00  within  the 
six  months  allowed  him,  he  is  permitted  to  re- 
new the  application  by  payment  of  a  renewal 
fee  of  $15.00,  and  the  application  will  be  again 
examined,  and,  when  allowed,  the  final  fee  of 
$20.00  must  be  paid  before  the  patent  issues. 
But  such  renewal  of  the  application  must  be  made 
within  two  years  after  the  notice  of  allowance 
of  the  original  application. 

My  fee  for  preparing  and  prosecuting  the  ap- 
plication is,  in  ordinary  cases,  involving  one 


26        PATENTS    AND    HOW    TO    OBTAIN    THEM. 

sheet  of  drawing,  $45.00,  including  the  drawing, 
of  which  sum  $35.00  is  payable  before  prepar- 
ing the  application  for  filing,  and  $10.00  on  re- 
ceipt of  the  first  official  action.  Thus  the  total 
cost  of  filing  an  ordinary  application  is  $50.00,  the 
total  cost  of  obtaining  the  patent  being  $80.00.  In 
more  complicated  cases  the  attorney's  fee  and  cost 
of  drawings  are  proportionately  greater. 

For  a  Re-issue  application,  my  charge,  and  the 
draftsman's  fee,  are  generally  the  same  as  for  an 
ordinary  patent,  but  the  Government  fee  is  only 
$30.00,  making  the  total  cost  $75.00.  The  whole  of 
the  Government  fee  for  a  Re-issue  is,  however, 
payable  on  filing  the  application. 

For  a  Design  Patent,  my  charge  is  $25.00,  in- 
cluding drawings.  The  Government  fee  is  $10.00 
for  a  3%  year  patent,  $15.00  for  a  7  year  patent, 
and  $30.00  for  a  14  year  patent. 

The  above  fee  for  a  patent  is  the  same  as 
the  standard  price  with  the  best  class  of  agents 
in  Washington,  D.  C.,  and  will  be  found  to  be 
reasonable  for  the  amount  and  character  of  the 
work  done.  An  inventor  may  receive  offers  to 
procure  him  a  patent  for  a  smaller  sum,  but  he 
should  remember  that  a  "paper"  patent  is  dear 
at  any  price.  To  obtain  a  patent  that  is  one 
only  in  name,  with  narrow  claims  that  do  not 
adequately  cover  the  invention,  requires  com- 
paratively little  labor  or  skill,  and  for  such  a 
patent  a  small  fee  is  a  proper  compensation.  But 
to  obtain  a  good  patent,  that  will  withstand  the 
assaults  of  infringers  and  protect  the  inventor, 
requires  the  expenditure  of  time,  hard  work, 
skill,  and  experience,  and  should  be  proportionate- 
ly remunerated.  A  good  patent  at  a  fair  price 
will  be  found  to  be  infinitely  cheaper  in  the  end. 


PATENTS    AND    HOW    TO    OBTAIN    THEM.         27 

Preliminary   Examinations. 

In  many  cases  it  is  advisable  to  have  a  pre- 
liminary examination  made,  before  applying  for 
a  patent,  to  ascertain  whether  the  invention  is 
patentable.  This  search  can.  be  made  with  the 
greatest  facility  at  the  Patent  Office  in  Washing- 
ton, where  the  various  patents  are  arranged  for 
inspection  in  classes  and  sub-classes.  My  charge 
for  having  this  search  conducted  by  my  corre- 
spondent in  Washington  is  $6.00.  An  immediate 
investigation  of  the  records  can  also  be  made 
at  greater  expense  at  my  office,  where  I  have  a 
complete  set  of  the  Patent  Office  Gazettes  and 
Annual  Indexes. 

Trade- Marks. 

Trade-marks  are  registered  for  thirty  years, 
renewable  for  thirty  years  more.  They  assist 
manufacturers  and  merchants  to  retain  the  trade 
to  .which  they  are  entitled  on  account  of  the 
reputation  or  excellence  of  their  goods. 

The  Government  fee  for  registering  a  trade- 
mark is  $10.00;  my  fee  is  $10.00,  exclusive  of  the 
drawing. 

Copyrights. 

Copyrights  are  granted  for  twenty-eight  years, 
renewable  for  fourteen  years  more,  to  any  citi- 
zen of  the  United  States  or  resident  therein,  who 
shall  be  the  author,  inventor,  or  proprietor  of  any 
book,  map,  chart,  dramatic  or  musical  composi- 
tion, engraving,  cut,  print,  photograph  or  negative 
thereof,  or  of  a  painting,  drawing,  chromo,  statue, 
model,  or  design  not  intended  for  use  as  a  trade- 
mark or  label. 

My  charge  for  procuring  a  copyright  is  $5.00, 
which  includes  all  Government  fees. 


28        PATENTS    AND    HOW    TO    OBTAIN    THEM. 

Assignments. 

An  assignment,  grant  or  conveyance  of  a  patent 
will  be  void  as  against  any  subsequent  purchaser 
or  mortgagee  for  a  valuable  consideration  without 
notice,  unless  recorded  in  the  Patent  Office 
within  three  months  from  the  date  thereof.  My 
charge  for  preparing  and  recording  an  assign- 
ment is  $5.00. 

Abstract    of    Title. 

An  abstract  of  title  is  generally  required  when 
the  owner  of  the  patent  undertakes  to  sell,  or 
a  party  proposes  to  purchase,  a  patent.  My  usual 
charge  for  an  abstract  of  title,  showing  each  re- 
corded transfer,  is  $5.00.  If  a  legal  opinion  as 
to  title  is  also  required,  my  fee  is  determined 
by  the  time  and  labor  required  in  preparing  it. 


Validity  and   Scope  of   Patents. 

•  Parties  contemplating  investing  money  in  pat- 
ents should  first  have  the  validity  and  scope  of 
the  claims  of  the  said  patents  carefully  exam- 
ined, and  a  report  made  thereon.  Many  seem- 
ingly broad  claims  of  patents  are  really  worth- 
less and  should  not  have  been  allowed,  and  in 
other  cases  it  may  be  found  that  the  claims 
must  be  so  restricted  by  the  prior  art  as  not 
to  protect  against  slightly  changed  forms  of  the 
invention. 

To  investigations  and  opinions  of  this  kind  I 
give  most  careful  attention,  and  my  charge  will 
depend  upon  the  complexity  and  importance  of 
the  case,  and  the  time  required  in  making  the 
investigation  and  report. 


PATENTS    AND    HOW    TO    OBTAIN    THEM.         29 

Foreign    Patents. 

I  have  had  extensive  experience  in  procuring 
foreign  patents  for  inventions,  and  can  obtain 
the  best  patents  in  all  countries  at  reasonable 
rates. 

The  following  table  gives  the  term  of  a  patent 
in  the  principal  foreign  countries,  and  my  charge 
for  procuring  the  same: 

Term.  Cost. 

Canada    18  years $40 

Great   Britain   14  years 75 

Germany   .15  years 80 

France    15  years 70 

Belgium    20  years 40 

Austria    15  years 75 

Hungary   15  years 75 

Switzerland    15  years 70 

Italy  15  years 75 

Spain  20  years 75 

Portugal    15  years 70 

Sweden   15  years 75 

Norway   15  years 70 

Denmark  15  years 75 

Russia   15  years 100 

Mexico  20  years 90 

Japan  15  years 90 

Australia 14  years 90 

New  Zealand  14  years 65 

These  prices  are  for  ordinary  cases. 

The  term  above  given  is  the  maximum  dura- 
tion of  the  patent,  but  there  are  important  par- 
ticulars to  be  noted  in  this  respect  with  regard 
to  the  several  countries.  Also  the  price  quoted 
covers  all  the  fees  in  ordinary  cases  for  pro- 
curing the  patent,  but  does  not  include  the  fur- 
ther payments  and  taxes  which  are  necessary 
in  nearly  all  foreign  countries  to  keep  the  pat- 


30        PATENTS    AND    HOW    TO    OBTAIN    THEM. 

ent  alive  for  its  maximum  duration.  Very  few 
patent  agencies  ever  apprise  their  clients  in  their 
circulars  of  these  further  payments.  I  think, 
however,  that  it  is  proper  that  the  intending 
patentee  should  have  the  whole  matter  set  plainly 
before  him. 

Foreign    Patents — Taxes. 

In  Canada  there  will  be  a  further  payment 
of  $20  at  the  end  of  the  6th  year,  and  of  a  simi- 
lar amount  at  the  end  of  the  12th  year.  In  Great 
Britain  there  is  an  annual  tax  commencing  at 
the  4th  year  of  $30  and  increasing  gradually  to 
$75  the  13th  year.  In  Germany  a  similar  annual 
tax  of  $20  the  2d  year  to  $190  the  15th  year. 
In  France  an  annual  tax  of  $23  each  year  com- 
mencing with  the  2nd.  In  Belgium  an  annual 
tax  of  $8  the  2nd  year,  increasing  to  $50  the  20th 
year.  In  Austria  and  Hungary  an  annual  tax 
of  $25  the  second  year,  increasing  to  $75  the  15th 
year.  Similar  taxes  are  the  rule  with  regard 
to  the  remaining  countries. 

All  the  above  charges  include  my  fee  for  at- 
tending to  the  payment  of  taxes,  etc. 

Foreign    Patents — Working. 

In  most  of  the  above  countries  it  is  necessary 
that  the  invention  be  worked  in  the  foreign  coun- 
try within  a  short  time,  varying  from  two  to  five 
years,  after  the  issue  of  the  patent  in  that  coun- 
try, otherwise  the  patent  becomes  void.  Also  the 
general  rule  is  that  any  foreign  patent  will  ex- 
pire at  the  same  time  as  a  patent  in  any  foreign 
country  for  the  same  invention.  Thus  in  general 
the  patents  in  all  the  countries  will  expire  with 
that,  in  the  country  having  the  shortest  term. 


PATENTS    AND    HOW    TO     OBTAIN    THEM.         31 

This   was   also   the   rule   with   the   United   States 
patents  prior  to  January  1,  1898. 

Foreign    Patents— Validity. 

Valid  patents  cannot  be  obtained  in  Germany 
and  France  if  applied  for  after  the  issue  of  the 
United  States  patent  for  the  same  invention;  nor 
in  Great  Britain  if  applied  for  after  knowledge 
of  the  invention  therein,  (and  it  is  therefore  not 
safe  to  apply  in  Great  Britain  more  than  a  week 
later  than  the  issue  of  the  U.  S.  patent),  nor  in 
Canada  if  applied  for  later  than  twelve  months 
after  the  issue  of  the  U.  S.  patent.  In  the  re- 
maining countries  mentioned  the  general  rule  is 
that  the  application  must  be  made  before  intro- 
duction of  the  invention  into  the  respective  coun- 
try. 

International    Union. 

These  rules  are,  however,  subject  to  an  excep- 
tion. The  International  Union  for  the  Protec- 
tion of  Industrial  Property  comprises  the  fol- 
lowing countries:  Australia,  Belgium,  Denmark, 
France,  Germany,  Great  Britain,  Italy,  Mexico, 
New  Zealand,  Norway,  Portugal,  Spain,  Sweden, 
Switzerland  and  the  United  States  of  America, 
with  some  other  smaller  countries.  Any  person 
filing  an  application  for  a  patent  in  the  United 
States  may,  within  twelve  months  from  the  date 
of  filing,  file  an  application  in  any  of  the  other 
countries  of  the  Union,  and  such  later  filing  will 
be  given  the  date  of  filing  of  the  U.  S.  application. 
Thus,  any  acts,  such  as  disclosure  of  the  inten- 
tion, which  would  render  the  patent  invalid  in 
such  foreign  country,  must  have  taken  place,  not 


32    PATENTS  AND  HOW  TO  OBTAIN  THEM. 

before  the  "actual"  date  of  filing  in  the  foreign 
country,  but  before  that  of  filing  in  the  United 
States  Patent  Office. 

I  have  given  careful  attention  to  the  selection 
of  foreign  agents,  and  to  all  matters  relating  to 
the  procurement  of  foreign  patents,  and  can 
promise  the  best  of  service.  At  the  same  time 
my  rates  will  be  found  as  reasonable  as  those  of 
other  reputable  attorneys. 


SUMMARY  OF  PATENT  LAW. 


ABANDONMENT. 

Recital  of,  but  failure  to  claim,  an  element,  in  an  appli- 
cation as  first  filed,  is  no  abandonment  of  such  element, 
when  the  same  is  subsequently  claimed  in  the  prosecution 
of  the  application. 

When  an  inventor  delays  applying  for  a  patent  "he  as- 
sumes the  chances  of  the  field  being  occupied  by  other 
and  more  diligent  designers,  more  prompt  to  supplement 
their  creative  efforts  by  a  reduction  to  practice." 

APPLICATION. 

It  is  not  the  result  produced  by  the  invention  that  is 
the  subject  of  the  patent  but  only  the  means  used  to  pro- 
duce the  result. 

If  a  specification  fails  to  make  the  invention  fully  known 
and  accessible  to  the  public  in  any  material  respect,  it  is 
fatally  defective  and  the  patent  is  void. 

If  the  invention  can  not  be  made  practically  operative 
without  a  further  exercise  of  inventive  skill,  the  patent 
is  void. 

The  description  is  sufficient  if  from  it  a  skilled  me- 
chanic could  construct  the  invention. 

Every  patent  for  a  composition  must  identify  the  com- 
position by  certain  characteristics  or  tests. 

The  drawing  should  show  the  entire  thing  described 
in  the  specification  as  constituting  the  invention  and  not 
merely  a  section  thereof. 

When  a  device  as  shown  in  the  drawing  is  inopera- 
tive and  the  defect  is  obviously  a  clerical  one,  the  draw- 
ing may  be  amended  to  cure  the  defect. 

An  amendment  can  not  introduce  matter  not  substan- 
tially described  in  the  application  as  filed. 

1  If  two  patents  covering  the  same  invention  issue  to 
the  same  inventor,  the  later  is  void. 

A  new  application  filed  by  the  executor  of  a  deceased 
applicant  is  a  continuation  of  the  former  application  and 
has  the  same  status  in  the  Patent  Office. 

An  application  for  a  patent  for  a  joint  invention  can 
be  made  only  by  all  the  joint  inventors. 


34  SUMMARY    OF    PATENT    LAW. 


The  Patent  Office  refuses  to  give  to  strangers  to  the 
record  copies  of  pending  applications  without  the  consent 
of  the  applicant  or  his  assignees. 


ASSIGNMENT. 

An  assignment,  grant,  or  conveyance  is  void  as  against 
any  subsequent  purchaser  or  mortgagee  for  a  valuable 
consideration,  without  notice,  unless  it  is  recorded  in 
the  Patent  Office  within  three  months  from  the  date 
thereof. 

An  assignment  of  an  unpatented  invention  which  does 
not  contain  a  request  that  the  patent  issue  to  the  assignee 
does  not  convey  legal  title  to  the  patent. 

A  patent  can  not  issue  to  the  assignee  unless  the  as- 
signment contains  a  request  to  that  effect  and  is  duly 
recorded. 

An  assignment  before  patent,  without  a  request  that 
the  patent  issue  to  the  assignee,  although  recorded  within 
three  months,  will  not  prevail  against  a  subsequent  as- 
signment with  such  a  request  to  a  bona  fide  purchaser. 

If  the  assignee  of  a  future  patent  records  his  assign- 
ment after  the  patent  issues,  the  legal  title  will  vest  in 
him  if  there  are  no  superior  rights. - 

The  record  of  an  assignment,  whenever  made,  is  no- 
tice to  a  subsequent  purchaser. 

Actual  notice  to  a  subsequent  purchaser  is  equivalent  to 
record. 

An  unrecorded   assignment   is   valid  against   the   assignor. 
An   assignment    requires    no    special   form. 

An  assignment  must  be  in  writing,  but  need  not  be  un- 
der seal. 

An  assignment   of  an  invention  before  patent   is   valid. 

An  assignment  before  the  patent  issues  is  a  contract 
to  assign  the  patent  when  issued,  and  creates  an  equit- 
able title  to  the  patent  in  the  assignee,  although  the  patent 
issues  to  the  inventor. 

An  assignment  holds  good  although  the  invention  is  not 
yet  perfected. 

An  assignment  of  one  patent  with  all  modifications, 
improvements,  and  re-issues  does  not  cover  a  later  in- 
vention attaining  the  same  end  by  different  means. 


SUMMARY    OF    PATENT    LAW.  35 


An  assignee  takes  subject  to  all  the  legal  consequences 
of  the  previous  acts  of  his  assignor,  such  as  implied 
licenses. 

A  conveyance  of  "all  my  right,  title  and  interest  in 
and  to,"  a  patent,  though  properly  recorded,  does  not 
affect  a  territorial  right  previously  conveyed  to  a  third 
party,  even  if  the  prior  conveyance  is  not  recorded. 

An  assignment  of  a  patent  carries  an  implied  warranty 
of  title. 

An  assignment  of  ''all  my  right,  title  and  interest" 
does  not  imply  a  warranty  of  title. 

If  a  patent  is  void  because  the  invention  is  useless, 
the  note  given  for  it  is  without  consideration. 

Money   paid   for   a   void   patent   can   be   recovered. 

A  statement  by  a  vender  that  an  invention  would  be 
useful  to  the  vendee  is  a  .mere  expression  of  opinion,  not 
a  fraud. 

Only  falsehood  as  to  matter  of  fact  and  not  errors  of 
opinion  can  render  a  sale  void. 

False  representations  as  to  the  amount  already  offered 
for  the  patent  are  not  such  warranties  of  value  as  will 
render  the  sale  void,  or  support  any  action  for  fraud. 

Married   women    or   minors   may    be   made    assignees. 
A  minor  must   assign   by   guardian. 

The  assignment  of  a  patent  by  one  of  two  adminis- 
trators is  sufficient  to  transfer  the  entire  interest  in  the 
patent. 

A  right  of  action  for  damages  for  past  infringements 
may  be  assigned. 

An  assignment  of  a  patent  does  not  cover  claims  for 
past  infringements  unless  so  expressed. 

An  assignment  during  a  suit  does  not  affect  the  liti- 
gation. 

After  an  assignment  has  been  forfeited  by  breach  of 
condition,  the  assignee  can  grant  nothing,  either  by  way 
of  license  or  otherwise. 

An  assignment  of  all  the  assignor's  property  except 
such  as  is  exempt  by  law  does  not  include  a  patent  right. 

A  trustee  in  insolvency  does  not,  by  virtue  of  his  ap 
pointment  as  trustee,  acquire  the  patents  of  the  insol- 
vent. 


36  SUMMARY    OF    PATENT    LAW. 


A  patent  can  not  be  seized  and  sold  on  execution  like 
personal  property  in  general. 

A  court  of  equity  may  compel  an  insolvent  to  assign 
the  patent  or  may  appoint  a  trustee  to  make  the  assign- 
ment. 


CLAIM. 

A  patentee   is   bound   by   his   claims. 

Claims  should  be  construed,  if  possible,  to  sustain  the 
patentee's  right  to  cover  his  entire  invention. 

But  the  court  can  not  go  outside  of  the  clear  meaning 
of  the  claims. 

Matter   not    claimed    is    not    covered    by    the    patent. 

When  an  element  is  described,  declared  to  be  an  es- 
sential feature  of  the  invention,  and  made  an  element 
in  the  claims,  the  patentee  is  not  at  liberty  to  say  that 
the  element  is  immaterial  or  that  a  device  which  dis- 
penses with  it  is  an  infringement. 

The  circumstance  that  a  patentee,'  when  an  applicant, 
had  no  attorney,  is  no  reason  for  granting  him  a  more 
liberal  construction  of  his  patent. 

A  claim  is  invalid,  when  the  patent  does  not  disclose 
the  manner  in  which  the  combination  of  the  claim  can 
be  operated. 

The  claims  need  not  be  limited  to  correspond  with  the 
form  of  operation  described. 

Details  of  construction  not  essential  to  the  invention 
should  be  described,  but  should  not  be  inserted  in  the 
claims. 

Differences  which  would  be  important  in  a  subordinate 
patent  are  unessential  in  a  pioneer  patent. 

A  claim  for  a  tube  "reduced  in  diameter  to  support 
the  end  of  a  spring"  covers  a  tube  having  ears  bent  in 
from  the  tube. 

An  understanding  of  the  physical  laws  under  which 
an  invention  operates  is  *not  essential  in  a  claim  for  a 
patent. 


SUMMARY    OF    PATENT    LAW.  37 


COPYRIGHT. 

One  advertising  pamphlet,  resembling  a  copyrighted  ad- 
vertising pamphlet  in  its  advertising  features  only,  does 
not  infringe  the  copyright,  since  such  features  are  not 
the  subject  of  a  copyright. 

A  device  for  the  storage  and  indexing  of  letters  is  not 
a  proper  subject  matter  for  copyright,  inasmuch  as  it  is 
not  a  medium  for  information. 


DESIGN. 

A  design  is  not  new  unless  it  appears  to  ordinary  ob- 
servers to  be  different  from  the  old,  but  the  difference 
may  be  small. 

Designs  have  relation  to  external  appearance  merely 
and  are  not  concerned  with  internal  structure. 

The  grant  of  a  mechanical  patent  is  no  bar  to  the  grant 
of  a  design  patent  for  the  same  article. 


EMPLOYEE   AND    EMPLOYEE. 

An  employee  may  assign  his  inventions  to  his  employer 
in  advance  of  making  them. 

When  an  employee  using  the  time  and  at  the  expense 
of  the  employer  makes  an  invention,  the  invention  is  his 
own,  but  the  employer  has  an  implied  license  to  use  it. 

When  a  workman  is  hired  to  invent,  the  employer  will 
own  the  inventions  which  fall  within  the  scope  of  the 
contract,  while  the  others  belong  to  the  employee. 

An  inventor  who  employs  a  mechanic  to  embody  his 
conception  in  practical  form  retains  his  exclusive  right 
to  the  perfected  improvement,  notwithstanding  the  per- 
fection is  partly  due  to  the  exercise  of  the  mechanical 
skill  of  the  employee. 

An  employee  may  be  enjoined  from  fraudulently  dis- 
closing the  secret  invention  of  his  employer. 

A  patent  granted  to  one  member  of  a  firm  is  not  part- 
nership property,  although  the  firm  paid  the  patent  fees 
and  used  the  invention. 

Toe  conduct  of  an  employee  in  permitting  his  em- 
ployers to  treat  the  invention  as  their  own  may  be  con- 


SUMMARY    OF    PATENT    LAW. 


elusive   evidence   of   an  agreement   that   the    invention   shall 
belong    to    them. 

By  contract  express  or  implied  an  employer  may  ac 
quire  a  right  either  to  own  the  invention  of  the  employee 
or  to  the  use  of  it.  The  law  does  not  favor  a  claim  to 
the  former,  but  favors  a  claim  to  the  latter.  Strict  proof 
therefore  is  required  to  establish  the  former  contract, 
whereas  the  latter  is  easily  established  and  will  generally 
be  presumed. 

EQUIVALENTS. 

Two  devices  are  equivalent  which  accomplish  the  same 
results  but  by  different  modes  of  operation. 

Where  a  patent  is  for  a  combination,  to  support  a 
charge  of  infringement  it  must  be  shown  that  the  in 
fringer  has  used  substantially  the  same  combination,  in- 
cluding every  one  of  the  elements  thereof,  or  a  mechanical 
equivalent  for  any  one  that  has  been  omitted. 

GRANTS. 

A  grant  should  be  construed  to  cover  whatever  is  nec- 
essary to  render  it  effective. 

An  assignee  of  a  territorial  right,  without  restrictions 
may  sell  the  patented  device  to  be  'used  anywhere,  but 
not  to  be  sold  again  outside  his  territory. 

If  A  grants  to  B  the  right  to  make  and  sell  a  patented 
article  in  the  State  of  New  York  only,  and  C  buys  the 
article  from  B,  C  cannot  be  prevented  from  selling  the 
article  anywhere  else  in  the  United  States. 

The  purchaser  of  a  machine  from  one  who  has  a  right 
to  use,  and  to  sell  to  others  to  be  used,  only  in  a  certain 
territory,  has  no  right  to  use  it  elsewhere,  and  if  he  does, 
is  liable  for  royalties  to  the  patentee. 

The  assignee  of  a  right  to  make,  use  and  sell  a  ma- 
chine only  in  a  certain  territory  may  sell  the  product  of 
the  machine  anywhere. 

INFRINGEMENT. 

Mere  differences  in  form  are  not  sufficient  to  avoid  in- 
fringement. 

Interchangeability  or  non-interchangeability  of  the  re- 
spective devices  is  an  important  test  as  to  infringement. 

An  inventor  is  entitled  to  all  the  necessary  and  legiti- 
mate results  attained  by  his  invention,  including  such  as 
were  not  foreseen. 


SUMMARY  OF  PATENT  LAW.  39 

Whether  or  not  a  device  is  an  infringement  is  deter- 
mined by  the  claims  of  the  patent,  not  by  the  actual  in- 
vention. 

One  valid  claim  in  a  patent  may  be  infringed  though 
other  claims  are  not  valid. 

Identity  of  mode  of  operation  is  necessary  for  one  de- 
vice to  infringe  the  patent  for  another. 

A  machine  different  in  form  will  infringe  if  the  struc- 
tural law  is  the  same  as  that  of  the  patented  machine. 

A  process  is  infringed  only  when  every  step  claimed  as 
essential  is  used. 

A  process  may  be  infringed  though  the  order  of  the 
steps  is  varied,  when  the  order  is  not  essential. 

A  combination  patent  is  infringed  if  the  substance  of  the 
combination  is  taken,  whatever  equivalents,  alterations,  or 
omissions  may  be  resorted  to. 

A  claim  comprising  "terminals,"  such  terminals  being 
essential  elements,  is  not  infringed  by  a  device  employing 
only  one  terminal. 

The  use  of  a  hard  cast-iron  pin  does  not  infringe  a 
claim  limited  to  a  soft-metal  safety-pin,  wooden  safety-pin 
being  old. 

The  substitution  of  spring  rockers  for  a  pivot  or  hinge 
to  produce  a  tipping  movement  is  an  infringement,  for  the 
two  are  equivalent. 

A  patent  for  a  composition  of  matter  is  infringed,  if 
the  new  element  does  the  same  thing  as  the  one  for  which 
it  is  substituted,  though  otherwise  it  is  different. 

A  design  infringes  a  patented  design  if  it  is  the  same  to 
the  eye  of  an  ordinary  observer  giving  such  attention  as  a 
purchaser  usually  gives. 

An   improvement  may  be  an  infringement. 

An  improver  may  infringe  though  his  improvement  gives 
to  the  invention  nearly  all  its  value. 

The  use  of  a  patented  invention  as  an  element  in  a 
new  construction  is  an  infringement. 

A  difference  in  the  purpose  for  which  an  invention  is 
used  will  not  prevent  an  infringement. 

Making  a  part  of  an  invention  with  the  intent  that 
others  shall  make  the  remainder  and  unite  them  is  in- 
fringement. 


40  SUMMARY  OF  PATENT  LAW. 


If  a  patented  invention  is  not  operative,  it  cannot  be 
infringed  by  one  that  is. 

An  article  incapable  of  performing  the  functions  of  a 
patented  device  cannot  be  an  infringement. 

A  device  which  may  be  forced  to  operate  like  the  pat- 
ented device  is  not  an  infringement  if  such  use  was  not 
an  object  of  the  construction. 

To  make  a  patented  article  in  order  to  experiment  with 
it  as  a  basis  for  proposed  improvement  by  the  maker  is 
not  infringement. 

To  experiment  with  a  patented  article  to  gratify  scien- 
tific tastes  or  for  curiosity  or  amusement  is  not  infringe- 
ment. 

To  make  for  use  in  order  to  see  whether  the  use  will  be 
profitable,  and  using  for  that  purpose  is  infringement. 

The  possession  of  infringing  articles  bought  for  use  but 
not  yet  used  is  an  infringement. 

There  may  be  an  infringement  though  the  infringer  does 
not  know  of  the  patent. 

A  sale  of  an  infringing  device  by  an  agent  is  an  infringe- 
ment by  the  principal. 

Any  party  making  profits  by  an  infringement  is  a  wrong- 
doer and  is  liable  to  the  patentee. 

One  who  licenses  others  to  use  certain  improvements  of 
his  own  does  not  infringe  the  original  patent  improved 
upon. 

The  use  of  an  infringing  device  is  not  justified  by  the 
fact  that  the  patentee  failed  for  some  years  to  manu- 
facture his  device. 

Nor  by  the  refusal  of  the  patentee  to  furnish  his  device 
when  required. 

No  infringement  can  be  committed  before  the  issue  of 
the  patent. 

An  infringement  may  be  committed  by  the  use,  after  a 
patent  issues,  of  a  device  constructed  before  the  issue  of 
the  patent. 

A  patentee  is  estopped  from  denying  the  validity  of  the 
patent  in  a  suit  for  infringement  brought  against  him  by 
his  assignee. 


SUMMARY  OF  PATENT  LAW.  41 


A  licensee  merely  refusing  to  pay  his  royalties  cannot 
be  treated  as  an  infringer. 

The  measure  of  damages  in  an  infringement  suit  is  not 
what  the  defendant  has  gained  but  what  the  plaintiff  has 
lost. 

A  patentee  may  circulate  notices  warning  the  public  not 
to  buy  the  invention  except  from  him. 

INJUNCTIONS. 

No  preliminary  injunction  will  be  granted  unless  the 
patent  has  been  sustained  by  a  judgment  or  acquiescence  in 
a  long  exclusive  use. 

A  bond  may  be  ordered  instead  of  an  injunction  where 
the  defendant  is  responsible  and  intends  to  contest  the 
suit. 

An  injunction  will  be  refused  and  a  bond  ordered  when 
the  defendant  has  large  capital  invested  and  the  plaintiff 
does  not  manufacture  the  invention. 

An  injunction  will  be  refused  and  a  bond  ordered  when 
the  defendant's  machine  embraces  valuable  features  not 
covered  by  the  plaintiff's  patent. 

An  injunction  will  be  granted  against  a  licensee  unless 
his  acts  are  in  accordance  with  his  license. 

If  the  defendant  infringes  when  the  plaintiff  is  power- 
less to  prevent  it,  that  does  not  take  away  his  right  to 
protect  his  interests  when  he  becomes  able. 

A  mere  forbearance  to  sue,  after  giving  notice,  does  not 
affect  the  right  to  an  injunction. 

A  license  fee  fixes  the  amount  of  damages  where  there 
have  been  licenses  enough  issued  to  establish  a  market 
value. 

Where  there  is  no  established  license  fee,  general  evi- 
dence concerning  damages  may  be  given. 

In  a  suit  for  infringment  the  verdict  of  the  jury  must 
be  confined  to  the  actual  damages  and  the  Court  may  then 
increase  them  not  exceeding  three  times  the  amount,  if  nec- 
essary to  give  complete  redress  to  the  plaintiff. 

The  recovery  of  profits  and  damages  from  the  manufac- 
turers of  an  infringing  machine  debars  the  patentee  from 
recovering  from  a  user  for  the  use  of  the  same  machine. 

The  refusal  of  a  defendant  to  exhibit  his  device  raises  a 
presumption  of  infringement. 


42  SUMMARY  OF  PATENT  LAW. 

An  oral  agreement  to  convey  a  patent  will  be  enforced. 

An  agreement  to  assign  all  future  inventions  relating  to 
a  certain  art  cannot  generally  be  enforced  in  equity. 

INTERFERENCES. 

The  burden  of  proof  is  upon  the  party  who  is  the  last 
to  file  his  application  in  the  patent  office. 

One  of  two  joint  patentees  may  afterwards  file  a  sole 
application  and  have  an  interference  declared  with  the 
joint  patent. 

INVENTIVE    SKILL. 

An  improvement,  embodying  means  to  cure  a  long  stand- 
ing defect  in  a  machine,  involves  invention,  although  the 
means  were  simple  and,  after  the  event,  apparently  ob- 
vious. 

In  a  suit  on  a  patent,  where  the  other  facts  leave  the 
question  of  invention  in  doubt,  the  fact  that  the  device  has 
generally  displaced  other  devices  of  its  kind  on  its  merits 
is  sufficient  to  turn  the  scale  in  favor  of  the  invention. 

Though  a  device  at  first  sight  appears  to  be  nothing  more 
than  a  simple  adaptation  of  a  former  device,  the  fact  that 
the  former  device  was  used  for  many  years  while  the  need 
was  felt  for  something  to  do  the  work  done  by  the  latter 
device,  implies  invention  and  not  mere  skill. 

The  fact  that  each  and  every  element  of  a  combination 
was  old  and  well  known  at  the  date  of  a  patent  is  not  suf- 
ficient to  deprive  the  invention  claimed  of  novelty,  for  most 
of  the  inventions  of  the  present  day  consist  of  the  utiliza- 
tion and  adaptation  of  mechanical  appliances  that  are 
themselves  old  and  well  known. 

When  a  patentee  had  borrowed  in  part  from  the  previous 
art,  but  had  so  arranged  the  various  parts  as  to  tend  to- 
ward simplicity  and  double  the  speed  of  the  machine  the 
patent  was  sustained. 

The  difference  between  the  use  of  two  devices  may  be  so 
extreme  and  the  conditions  so  radically  different  that  the 
adaptation  of  what  was  useful  in  one  sphere  to  use  in 
another  would  possibly  require  more  inventive  faculty  than 
the  creation  of  something  novel  in  itself. 

Inclining  holes  in  a  gas-heater  downwards  instead  of 
horizontally,  when  more  efficient,  is  patentable. 


SUMMARY    OF    PATENT    LAW.  43 

Where  the  article  sought  to  be  patented  differs  from  prior 
like  articles  merely  in  the  superiority  of  the  materials  of 
which  it  is  composed,  the  material  and  its  properties  be- 
ing old  and  known,  there  is  no  invention  in  the  substitu- 
tion. 

There    is    no    invention    involved    in    striking    up    from    a 

ank   by  means   of   a   die   a   ra" 
viously  been  made  by  casting. 


blank   by  means   of  a  die   a   railway   brace  which  has   pre 
b 


To  make  a  single  solid  casting  instead  of  connected  parts 
is  not  invention. 

To  make  an  apparatus  portable  is  not  a  patentable  im- 
provement. 

It  does  not  require  invention  merely  to  unite  two  short 
cars  so  as  to  make  a  single  long  car  with  a  central  trans- 
verse platform. 


It    is    not    patentable    to    provide    an    index    table    across 
ch    page    of    an    index 
or  back  only  of  the  book. 


each    page    of    an    index    volume,    instead    of    at    the    front 
ck 


It  does  not  require  invention  to  provide  an  old  form  ot 
garment-stay  with  projections,  which  are  also  old  for  the 
same  purpose  in  devices  of  a  similar  character. 


JURISDICTION. 

Questions  affecting  the  validity  of  a  patent,  the  title  to  a 
patent  or  the  infringement  of  a  patent  are  determined  in 
the  Federal  Courts  only. 

Federal  C'ourts  have  no  jurisdiction  over  suits  for  royal- 
ties. 

A  Circuit  Court  has  no  jurisdiction  unless  the  defendant 
is  served  in  his  own  district,  or  is  found  and  served  where 
sued. 

Actions  on  a  contract  relating  to  a  patent  between  citi- 
zens of  the  same  State  are  determined  in  the  State  Court 
only. 

The  validity  of  a  patent  may  be  the  subject  of  inquiry 
in  a  State  Court  collaterally  in  a  suit  upon  a  contract. 

A   State  Court   cannot   enjoin  infringers. 

A  State  cannot  tax  the  property  in  Letters  Patent  but 
may  tax  the  proceeds  thereof. 

A  decision  in  the  Patent  Office  is  not  binding  on  the 
Courts. 


44  SUMMARY  OF  PATENT  LAW. 


LICENSES. 

The  only  matter  conveyed  in  a  license  is  the  right  not  to 
be  sued. 

A  grant  reserving  to  the  grantor  certain  usages  of  the 
invention  is  a  mere  license. 

A  license  need  not  be  written. 

Oral  evidence  is  not  admissible  to  explain  a  written  li- 
cense but  the  parties  must  stand  to  the  license  as  written. 

A   license  need  not   be  recorded. 

Licenses  are  governed  by  the  State  Law. 

A  license  may  be  granted  before  the  patent  issues. 

A  license  is  only  assignable  when  it  clearly  appears  that 
it  was  intended  to  be  so. 

A  license  to  use  a  certain  fixed  quantity  is  assignable. 

A  personal  license  granted  for  a  certain  period  will  ex- 
pire at  the  death  of  the  licensee  unless  also  granted  to  his 
assignees. 

A  license  to  a  partnership  is  not  affected  by  a  change  of 
members  in  the  firm. 

A  license  to  manufacture  "at  their  shop"  in  a  place  de- 
scribed, is  not  transferable. 

A  license  to  use  "at  his  own  establishment"  does  not 
cover  a  use  at  a  shop  owned  by  himself  and  others. 

A  license  to  use  a  device  on  a  certain  railroad  does  not 
carry  the  right  to  use  the  device  on  the  cars  of  the  licensee 
over  whatever  railroad  they  may  be  run. 

A  license  to  a  railroad  company  to  use  a  patented  de- 
vice on  their  road  extends  no  further  than  the  road  was 
built  and  used  by  it  at  the  time  the  license  was  given,  the 
use  on  roads  built  or  leased  afterwards  not  being  pro- 
tected. 

A  license  "to  use  to  the  extent  of  one  machine"  in- 
cludes the  right  to  make  for  such  use  and  to  repair  in- 
definitely. 

The  words  "licensed  to  use  once  only"  if  stamped  on  an 
invention  are  notice  that  it  is  used  under  such  a  license 
and  that  the  license  expires  on  its  first  use. 


SUMMARY    OF    PATENT    LAW.  45 


When  an  inventor  sells  an  article  which  is  to  be  pro- 
tected by  a  patent,  or  knowingly  permits  another  to  use  it, 
before  the  patent  issues,  the  purchaser  or  maker  has  an 
implied  license  to  use  and  sell  the  specific  article  only,  the 
same  as  if  he  had  bought  it  from  the  patentee  after  the 
issue  of  the  patent. 

The  lawful  sale  of  a  patented  article  carries  with  it  the 
right  to  use  it  until  worn  out. 

When  a  patented  device  is  accidentally  destroyed  or 
where  it  is  practically  worn  out,  the  owner  cannot,  under 
pretense  of  repairing  it,  make  a  new  device.  In  such  case 
he  must  cast  it  aside  and  buy  a  new  one  from  the  pat- 
entee. 

Where  a  patent  covers  the  combination  of  a  drawhead, 
a  knuckle,  a  pivot-pin,  and  a  locking-pin,  it  is  not  in- 
fringed by  a  defendant  who  furnishes  the  knuckles  to  re- 
place broken  ones. 

A  patented  machine,  sold  at  a  sheriff's  sale,  carries  with 
it  a  license  to  use  the  machine. 

The  sale  of  an  invention,  the  use  of  which  involves  the 
use  of  a  process  patented  by  the  same  grantor,  is  a  license 
to  use  the  process. 

The  contract  of  a  workman  to  give  his  employer  the 
benefit  of  his  inventions  is  a  license,  not  a  grant. 

A  license  fully  paid  for  in  advance,  and  not  upon  condi- 
tion, is  irrevocable. 

A  breach  of  covenant  in  a  license  does  not  work  a  for- 
feiture of  the  license  unless  it  is  so  expressly  agreed. 

It  is  the  duty  of  the  licensor  to  demand  the  license  fee, 
if  he  has  no  other  agreement,  and  not  wait  for  the  licensee 
to  pay  it. 

If  a  royalty  is  based  on  the  number  of  articles  sold,  and 
the  licensee  ceases  to  make  anu  sell,  he  abandons  his  li- 
cense, and  the  licensor  may  then  license  other  parties. 

An  agreement  to  pay  the  inventor  a  royalty  until  $5,000 
has  been  paid  and  then  a  lower  one,  is  an  agreement  to 
continue  the  business  as  long  as  it  is  reasonably  profitable. 

An  agreement  to  pay  a  certain  sum  for  each  of  the  first 
four  hundred  machines  is  not  a  contract  to  make  that  num- 
ber. 

An  agreement  to  pay  a  certain  royalty  on  every  article 
made  on  the  patented  machine  i^  not  an  agreement  to 
run  a  machine  to  its  utmost  capacity. 


46  SUMMARY  OF  PATENT  LAW. 


A  licensee  while  receiving  benefit  under  an  apparently 
void  patent  is  obliged  to  pay  his  royalties,  and  the  in- 
validity of  the  patent  is  no  defense. 

A  licensee  must  repudiate  his  license  before  he  can  de- 
fend against  a  claim  for  royalties  by  denying  the  validity 
of  the  patent. 

When  an  exclusive  licensee  fails  to  pay  as  he  agrees, 
and  the  patentee  thereupon  grants  an  exclusive  license  to 
another,  who  has  notice  of  the  prior  license,  the  first  li- 
censee may  at  any  time  tender  what  is  due  and  assert  his 
rights  as  against  the  second  licensee. 

A  license  under  a  foreign  patent  does  not  authorize  tha 
licensee  to  make  the  article  abroad  for  use  here. 

A  license  taken  to  avoid  a  suit  is  not  taken  under  duress 
or  fraud. 

Each  joint  owner  of  a  patent  may  license  without  the 
consent  of  the  others,  but  is  liable  to  them  for  their  shares 
of  the  profits  of  such  license. 

MARKING   "PATENTED." 

Any  person  marking  an  unpatented  article  as  patented, 
with  intent  to  deceive,  is  liable  to  a_  penalty  of  $100  for 
each  article;  one-half  of  which  is  paid  to  the  person  suing 
for  the  same;  any  person  may  bring  suit. 

When  a  device  has  been  manufactured  and  sold  for  five 
years,  it  is  immaterial  that  a  large  number  of  the  devices 
were  not  marked  "patented"  if  enough  were  so  marked  to 
give  general  notice  to  the  public. 

There  is  no  objection  to  marking  an  article  for  which 
an  application  has  been  made,  as  "Patent  applied  for." 

Any  person  infringing  a  design  patent  is  liable  to  a  pen- 
alty of  not  less  than  $250. 

PATENTABILITY. 

The  object  of  an  invention  is  not  patentable,  the  means 
for  attaining  the  object  may  be. 

Adulterations  of  food  are  not  patentable. 

Doubts  as  to  patentability  should  be  resolved  in  favor  of 
the  inventor. 

A  combination  of  old  elements  producing  a  new  and  use- 
ful result  is  patentable. 

An  old  construction  in  a  windmill  is  not  patentable  in  a 
paddle  wheel. 


SUMMARY    OF    PATENT    LAW.  47 


An  old  construction  of  cutter-head  in  a  wood-planing  ma- 
chine is  not  patentable  in  an  ice-planing  machine. 

PAYMENT    OF   FEES. 

When  an  appeal  is  regularly  taken  and  the  fee  therefor 
paid,  but  the  applicant  changes  his  purpose  and  concludes* 
not  to  prosecute  the  appeal,  the  appeal  fee  cannot  be  re- 
turned. 

PEIOE   USE. 

A  process  accidentally  performed  by  an  experimenter,  but 
unnoted,  and  presumably  unobserved,  by  him,  does  not  an- 
ticipate a  subsequent  invention  of  the  process. 

A  mere  accidental  use  of  some  of  the  features  of  an  in- 
vention without  recognition  of  its  benefit,  does  not  consti- 
tute anticipation. 

A  suggestion  in  a  prior  patent  that  a  part  of  the  opera- 
tion may  be  the  same  as  applicant's  process,  is  not  an  antic- 
ipation, where,  first,  such  change  in  the  operation  was  not 
made,  and,  secondly,  the  patent  did  not  state  clearly  how 
it  could  be  made. 

Evidence  of  experimental  use  of  the  device  patented, 
which  was  unknown  to  the  patentee,  is  not  an  anticipa- 
tion of  his  patent. 

The  patent  of  an  originator  of  a  complete  and  successful 
invention  cannot  be  invalidated  by  proof  of  any  number  of 
incomplete  and  imperfect  devices. 

The  fact  that  all  the  elements  of  a  combination  may  be 
found  partly  in  one  prior  structure  and  partly  in  another 
is  unsafe  ground  for  overturning  a  patent. 

Oral  testimony,  unsupported  by  patents  or  exhibits,  tend- 
ing to  show  prior  use  of  a  device  regularly  patented,  is, 
in  the  nature  of  the  case,  open  to  grave  suspicion. 

As  clear  and  convincing  proof  is  necessary  to  invalidate 
a  patent  by  evidence  of  prior  use  as  would  be  required  to 
convict  a  person  charged  with  crime. 

Prior  use  requires  a  practical  working  apparatus. 

The  abandonment  of  a  thing  greatly  needed  indicates  that 
it  was  an  unsuccessful  experiment. 

Secret  use  is  not  prior  use. 

PROCESS. 

A  new  process  may  be  created  by  omitting  one  of  the 
steps  regarded  as  necessary  ia  an  old  one. 


SUMMARY    OF    PATENT    LAW. 


A  process,  within  the  meaning  of  the  patent  laws,  must 
accomplish  some  change  in  the  character  or  condition  of 
material  objects. 

PUBLIC   USE. 

Use  in  public,  or  by  the  public,  in  the  way  of  business, 
or  a  sale,  or  an  offer  for  sale,  more  than  two  years  prior 
to  the  application,  is  a  bar  to  a  patent. 

The  making  or  construction  of  an  invention  without  us- 
ing it  is  not  public  use. 

A  use,  clearly  experimental,  although  public,  to  test  the 
capability  of  the  invention,  is  not  public  use. 

A  continued  use  in  business  without  change  is  not  ex- 
perimental use. 

A  single  instance  of  use  in  public,  or  a  single  sale,  is  a 
sufficient  bar,  if  more  than  two  years  prior  to  the  appli- 
cation. 

Use  in  a  workshop,  when  the  workmen  are  pledged  to 
secrecy,  is  not  public  use;  but  if  they  are  not  pledged  to 
secrecy,  or  if  the  use  is  in  view  of  customers,  it  is  pub- 
lic use. 

The  invalidating  public  use  may  be  without  the  consent 
of  the  inventor. 

The  two  years  public  use  invalidating  the  patent  must  be 
established  beyond  a  reasonable  doubt. 

If  there  has  been  a  use  in  public  more  than  two  years 
before  application,  the  burden  is  upon  the  patentee  to  prove 
that  it  was  experimental. 

Sale  of  the  future  patent  covering  an  invention  more 
than  two  years  before  the  application  does  not  bar  the 
patent. 

When  the  invention  is  put  into  public  use  without  re- 
serving rights  to  it  or  exercising  control  over  it,  or  ex- 
amining it  to  test  its  efficiency,  the  use  is  not  experi- 
mental. 

REAL    INVENTOK. 

If  A  suggests  the  idea  of  an  invention  to  B  but  gives  no 
explanation  how  the  idea  is  to  be  carried  into  effect,  and 
B  embodies  the  idea  in  practical  shape,  B  is  the  real  in- 
ventor. 

When  a  partv  suggested  to  another  that  a  certain  tool 
or  device  could  be  altered  to  adapt  it  for  a  desired  oper- 


SUMMARY  OF  PATENT  LAW.  49 


ation,  but  did  not  explain  how,  and  the  latter  proceeded  to 
make  the  alterations,  the  latter  is  the  inventor. 

An  inventor  assigns  an  interest  in  his  invention  to  an- 
other, who  agrees  to  furnish  all  necessary  funds.  The  lat- 
ter then  experiments  and  makes  the  invention  a  success. 
He  cannot,  however,  for  that  reason  appropriate  more  than 
the  original  interest  assigned  him. 


REDUCTION  TO  PRACTICE. 

A  drawing  or  model  demonstrating  the  efficiency  and  op- 
erativeness  of  the  machine  is  not  the  equivalent  of  the  ac- 
tual machine  and  is  not  a  reduction  to  practice. 

A  machine  may  have  been  far  from  perfect  and  never 
operated  continuously  for  work  in  a  commercial  sense,  and 
yet  a  reasonably  successful  reduction  to  practice. 

In  cases  where  delay  in  completing  an  invention  is  ex- 
cused there  is  something  of  compelling  power  in  the  cir- 
cumstances that  produce  it. 

Poverty,  sickness,  etc.,  will  not  excuse  delay  in  reduc- 
tion to  practice  for  an  indefinite  period. 


RE-ISSUES. 

A  delay  of  two  years  is  the  limit  permissible  in  apply- 
ing for  a  re-issue  to  broaden  a  claim,  except  unaer  spe- 
cial circumstances. 

A  re-issue  will  not  be  granted,  if,  before  applying  for 
a  re-issue,  other  parties  have  begun  to  use  the  subject 
matter  not  claimed. 

A  claim  rejected  and  cancelled  in  the  original  applica- 
tion cannot  be  restored  on  re-issue. 

If  the  application  for  re-issue  be  rejected,  the  original 
patent  stands  precisely  as  though  a  re-issue  had  never 
been  applied  for,  unless  the  re-issue  be  refused  upon  some 
ground  equally  affecting1  the  original  patent. 

A  re-issue  may  correct  errors  occasioned  by  mistaken 
ideas  of  the  objections  raised  in  the  Patent  Office. 


TRADE-MARKS. 

Trade-marks   cannot   be  registered  as   labels. 

Neither  a  print  nor  a  label  can  be  registered  as  a  print 
or  label  if  previously  used  as  a  trade-mark,  but  must  be 
registered  as  a  trade-mark. 


50  SUMMARY  OF  PATENT  LAW. 


A  print  or  label  can  be  registered  if  it  has  artistic  merit 
as  a  picture,  but  if  it  merely  describes  the  article  in  words 
it  cannot  be  registered. 

The  word  "imperial"  being  descriptive  of  quality  cannot 
become  the  subject  of  a  lawful  trade-mark. 

The  word  "Olive"  cannot  be  registered  as  a  trade-mark 
for  bicycles,  as  it  indicates  the  color  of  the  bicycles. 

Numerals  to  identify  specific  remedies  are  descriptive 
terms  and  not  registrable  as  trade-marks. 

Bromo-quinine  is  either  descriptive,  if  the  preparation 
contains  bromide,  or  misleading,  if  it  does  not,  and  in 
either  case  is  not  a  valid  trade-mark. 

The  words  "Syrup  of  Figs"  for  a  compound  whose  prin- 
cipal ingredient  is  senna  is  not  a  valid  trade-mark,  being 
deceptive. 

The  words  "Fibre  Chamois"  are  sufficiently  ai'bitrary  to 
be  registrable. 

The  words  "Social  Register"  constitute  a  valid  trade- 
mark. 

The  form  of  a  package  alone  can  .rarely  be  the  subject 
of  trade-mark  protection.  If  novel,  it  should  be  the  sub- 
ject of  a  design  patent. 

When  an  inventor  obtains  a  patent  on  a  device  and  the 
device  is  known  by  a  certain  name,  the  name  becomes 
public  property  at  the  expiration  of  the  patent. 

When  a  sewing  machine  invented  by  S.  becomes  known  as 
the  S.  sewing  machine,  and  is  patented,  then  after  the 
expiration  of  the  patent  any  one  can  make  and  sell  a  ma- 
chine and  has  a  right  to  call  it  an  S.  sewing  machine. 

Where  a  name  has  been  used  as  a  mark  experimentally 
and  put  upon  the  market  at  long  intervals,  and  in  the 
meantime  a  second  party  has  innocently  used  the  name  and 
built  up  a  large  business,  the  first  party  will  have  acquired 
no  rights  against  the  second. 

A  man  has  the  right  to  the  use  of  his  own  name  to 
designate  his  goods  so  long  as  he  uses  it  honestly  and  so 
as  not  to  injure  another  having  the  same  name,  and  to 
prevent  such  injury  he  may  be  required  to  use  his  name 
in  a  special  manner  pointed  out  in  an  injunction. 

No   one  may   designate  an   article   of  his   own  production 


SUMMARY    OF    PATENT    LAW.  51 


by  his  own  name  in  such  a  way  as  to  cause  it  to  be  mis- 
taken for  the  manufacture  of  another  already  on  the  market. 
The  essential  feature  of  a  trade-mark  is  not  that  which 
the  registrant  selects  to  designate  as  such,  but  that  which 
would  strike  the  public  mind  as  its  most  salient  feature. 


TRANSFER  OF  PATENTS. 

Every  patent  and  every  interest  in  a  patent  is  transfer- 
able. 

A  conveyance  of  the  whole  interest,  or  an  undivided  por- 
tion of  the  whole  interest,  throughout  the  whole  of  the 
United  States,  is  an  assignment. 

A  conveyance  of  such  an  interest  throughout  a  part  only 
of  the  United  States  is  a  grant. 

A  conveyance  of  any  other  interest  than  that  by  assign- 
ment or  grant  is  a  license. 

A  transfer  of  the  exclusive  right  to  sell  an  invention  is  a 
license  only,  since  it  does  not  transfer  the  exclusive  right 
to  make  or  use,  and  the  legal  right  to  the  patent  does  not 
pass  by  the  transfer. 

A  transfer  of  the  right  to  make  and  sell  carries  the  right 
to  use  the  invention,  and,  if  exclusive,  transfers  the  entire 
invention,  and  is  not  a  license  but  an  assignment. 


UTILITY. 

The  degree  of  utility  of  a  device  is  unimportant  in  de- 
termining whether  a  device  be  patentable.  If  the  inven- 
tion is  not  frivolous  or  prejudicial  to  the  public  and  has 
any  degree  of  usefulness,  no  matter  how  slight,  it  is  pat- 
entable. 

An  invention  employed  only  for  gambling  is  not  useful  or 
patentable. 


TESTIMONIALS 


140  North  Ninth  St.,  San  Jose,  Cal.,  Feb.  25,  1900. 
Mr.  Francis  M.  Wright — Dear  Sir:  I  have  had  several 
patents  granted  to  me,  but  none  with  as  little  delay  as 
the  one  secured  by  you  on  my  "Musical  Whistle."  This, 
coupled  with  the  fact  that  you  secured  the  allowance  of 
two  broad,  comprehensive  claims,  while  another  local  Patent 
Agency  reported  upon  making  a  "Preliminary  Examination" 
that  this  article  was  not  even  patentable,  shows  that  you 
thoroughly  understand  your  business  «and  are  worthy  the 
patronage  of  inventors  desiring  quick,  intelligent  service. 
Very  truly  yours,  M.  BARTHEL. 

Gualala,  Cal.,  Feb.  9,  1900. 

F.  M.  Wright,  Esq.,  Atty.  at  Law,  San  Francisco,  Cal. 
— Dear  Sir:  I  want  to  thank  you,  and  express  my  satisfac- 
tion at  the  manner  in  which  you  procured  United  States 
and  Canadian  Letters  Patent  on  Rotary  Engine.  You  ar» 
at  liberty  to  refer  to  me  at  any  time.  Yours  truly, 

E.    P.    COUTURE. 


I  consider  Patent  Atty.  Francis  M.  Wright  one  of  the  best 
and  most  reliable  patent  experts  in  the  country.  I  know 
him  to  be  a  man  of  highest  character,  and  what  he  says 
can  be  relied  on  as  absolutely  correct.  Should  he  consider 
an  invention  unpatentable  he  frankly  says  so  and  thus 
spares  the  inventor  needless  expense  and  mortification.  He 
also  gives  sound  advice  as  to  how  a  patent  may  be  mar- 
keted at  the  least  expense  and  with  the  best  prospects  of 
success.  I  strongly  recommend  him  to  all  my  friends  who 
need  the  services  of  a  careful,  painstaking  and  conscientious 
expert.  They  can  safely  rely  on  his  knowledge,  judgment 
and  integrity. 

DR.   F.    CURTIS. 
401  L   St.,    Sacramento,    Cal. 


Watsonville,  Cal.,  Jan.  24,  1900. 

Mr.  W.  R.  Ellis — My  Dear  Sir: — I  followed  your  advice 
and  took  the  case  from  my  foi-mer  attorney  and  put  it  into 
the  hands  of  Mr.  F.  M.  Wright,  and  in  less  than  thirty  days 
the  claim  was  allowed,  a  claim  too  that  covers  the  in- 
vention. 

I  wish  to  thank  you  a  thousand  times  for  your  timely 
advice.  My  case  was  put  into  the  hands  of 


54  TESTIMONIALS. 


last  June,   and  after  over  six  months   time 

was  a  complete  failure;  no  claim  was  allowed  and,  in  fact 
no  claim  was  ever  made  which,  if  allowed,  would  have  cov- 
ered my  invention.  I  had  almost  lost  hope  of  securing  my 
claim  although  satisfied  that  no  reference  cited  by  the  Ex- 
aminer was  pertinent  in  the  case,  and  why  ?  The  claims 
were  all  wrong. 

Again  I  thank  you  and  hope  to  be  able  some  day  to  re- 
turn the  favor.     Your  friend, 

DR.    E.    EDGAR    CAMPBELL. 


Livermore,   Cal.,  Jan.  31,  1900. 

Dr.  R.  E.  Campbell,  Watsonville,  Cal. — Dear  Doctor: 
Yours  of  the  24th  inst.  at  hand.  I  am  pleased  but  not 
surprised  at  the  outcome  of  your  late  patent  application. 
I  knew,  as  I  told  you,  that  Mr.  Wright  would  go  to  the 
core  of  your  case  and  get  all  there  was  in  it  with  prompt- 
ness. I  had  an  unfortunate  experience  not  unlike  yours 
with  inefficient  patent  attorneys  in  San  Francisco  before  I 
met  Mr.  Wright.  In  one  case  I  was  finally  and  completely 
rejected  after  nearly  a  year's  fight  in  the  Patent  Office. 
The  case  was  "bungled."  Mr.  Wright  took  it  up  and  ob- 
tained strong  claims  for  me,  giving  me  abundant  protec- 
tion, and  the  invention  thus  covered  I  have  now  leased 
to  one  of  the  biggest  factories  of  the  East  with  the  brightest 
prospects  of  obtaining  good  returns  from  it. 

I  am  more  than  glad  that  you  have  found  Mr.  Wright, 
to  your  own  satisfaction,  all  that  I  led  you  to  expect  him 
to  be.  A  patent  solicitor  should  have  wit,  an  inventive  mind, 
and  a  conscience.  These  Mr.  Wright  has  and  more.  He  is, 
in  my  opinion,  the  best  equipped  man  in  his  profession  on 
the  Pacific  Coast.  Sincerely, 

W.   R.   ELLIS, 
Inventor  the  Ellis  Ballot  Machine. 


2220  Adeline   St.,   Oakland,   Cal. 

Mr.  Francis  M.  Wright — Dear  Sir:  I  heartily  appre- 
ciate the  fact  that  in  all  my  experience  with  patent  agents, 
the  obtaining  of  my  patent  on  "Mucilage  Spreader,"  in 
twenty-three  days  from  the  date  of  application,  you  have 
broken  the  record  for  promptness,  and  ability  in  your  pro- 
fession. I  assure  you  it  gives  me  pleasure  to  make  men- 
tion of  you  in  this  manner.  PHILO  E.  DANIELS. 


San    Francisco,    March    9,    1899. 
Having  had   some  varied   experience  in  procuring  patents 


TESTIMONIALS.  55 


for  my  inventions,  it  gives  me  great  pleasure  to  testify  to 
the  professional  ability  and  business-like  methods  of  Mr. 
F.  M.  Wright,  who  is  at  present  handling  my  patent  cases. 
In  particular  I  have  been  favorably  impressed  with  the 
thoroughness  with  which  Mr.  Wright  grasps  the  essential 
and  vital  features  of  an  invention,  and  the  lucid  and  con- 
vincing style  in  which  he  presents  them  to  the  Patent  Of- 
fice. He  has  been  notably  prompt  in  official  action  and  has 
treated  me  straightforwardly  as  a  client.  I  have  found 
Mr.  Wright  reasonable  in  his  charges.  I  believe  him  to  be 
thoroughly  reliable  in  every  way,  and  can  confidentially 
recommend  him  to  other  inventors. 

C.  W.   TUDOR   DAVIES. 


2151  San  Antonio  Ave.,  Alameda,  Cal.,  Oct.  14,  1898. 
To  Whom  It  May  Concern:  It  gives  me  sincere  pleasure 
to  say  that  I  have  employed  the  services  of  Francis  M. 
Wright,  Esq.,  as  patent  attorney  in  several  inventions  of 
mine,  and  can,  and  do,  attest  the  fact  that  he  is  most  trust- 
worthy and  competent.  Indeed,  I  may  say,  in  all  truth,  that 
I  have  found  no  one  in  San  Francisco  who  has  ever  per 
formed  his  work  in  this  direction  as  satisfactorily  as  Mr. 
Wright  has  done,  and  I  shall  most  certainly  continue  to  em- 
ploy his  services  in  any  patent  work  that  I  may  hereafter 
have  in  hand.  His  wide  experience  as  an  examiner  in  the 
United  States  Patent  Office,  as  well  as  his  abilities  in  his 
profession,  eminently  fit  him  for  successful  work,  and  ren- 
der him  worthy  of  the  confidence  of  his  clientage.  Re 
spectfully,  WILLARD  B.  FARWELL. 


San   Francisco,    March   27,    1899. 

Mr.  F.  M.  Wright — Dear  Sir:  Having  obtained  several 
patents  through  your  management,  it  gives  me  great  pleas- 
ure to  state  that  your  handling  of  them  has  been  quite  sat- 
isfactory to  me — having  had  considerable  trouble  with  other 
patent  attorneys.  I  think  I  am  able  to  form  a  fairly  good 
judgment  now  about  what  is  required  to  draw  up  claims 
so  as  to  get  an  invention  covered  as  broadly  as  possible, 
and  will  say  that  I  hold  a  good  opinion  of  your  ability 
and  integrity,  so  far  as  the  same  have  come  under  my 
observation,  and  I  shall  always  be  willing  to  recommend 
you  to  my  friends.  Yours  sincerely, 

HENRY  H.   GORTER, 
Master  Mechanic  S.  F.  Fire  Dept. 

February  3,  1899. 
To    Whom   It   My    Concern:      I   have   had   F.    M.    Wright, 


56  TESTIMONIALS. 


of  723  Market  Street,  San  Francisco,  attending  to  patent 
business  before  the  United  States  Patent  Office  for  me  in 
a  number  of  cases,  and  I  regard  him  as  one  of  the  ablest 
men  in  that  line  I  have  ever  met.  I  can  recommend  him 
to  any  one  who  needs  an  attorney  in  the  patent  business. 

F.    M.    GRAHAM. 


220  South  Ninth  St.,  San  Jose,  Cal. 

February  0,  1900. 

To  Whom  It  May  Concern :  I  have  known  Mr.  Francis 
M.  Wright  for  the  past  two  years  as  a  Patent  Attorney, 
having  secured  Patents  through  his  efforts,  and  I  consider 
him  to  be  one  of  the  ablest  Patent  Attorneys  on  this  Coast. 
He  is  honest,  persevering,  and  untiring  in  his  efforts  for 
his  clients. 

I  cheerfully  recommend  him  to  any  one  requiring  the  ser- 
vices of  a  very  capable  and  conscientious  gentleman  and 
attorney.  E.  W.  HUTCHINSON. 


114a    llth    St.,    San    Francisco. 
King's    Institute   of   Vibration,    138    McAllister    St., 

San  Francisco,  C'al.,  Dec.  4,   1000. 

Francis  M.  Wright,  Esq. — Dear  SirL  I  wish  to  express 
my  appreciation  of  the  able  manner  in  which  you  have  con- 
ducted my  applications  and  secured  allowances  for  pat- 
ents. The  first  application  seemed  to  be  one  which  pre- 
sented much  difficulty  to  my  former  attorney,  the  claims 
allowed  being  unsatisfactory  to  me.  After  placing  the 
matter  in  your  hands  I  found  that  you  were  able  to  meet  all 
the  technicalities  of  the  case,  drafting  the  broadest  and  most 
comprehensive  and  at  the  same  time  most  concise  claims  to 
meet  and  cover  most  thoroughly  all  the  requirements  of  my 
invention.  Respectfully  yours, 

F.    KING. 


Mr.  F.  M.  Wright — Dear  Sir:  Allow  me  to  say  as  briefly 
as  possible  that,  after  trying  to  get  a  patent  myself,  after 
repeated  rejections  I  sent  the  case  to  an  advertising  firm  in 
Washington,  but  they  could  see  no  prospect  of  getting  the 

fatent.      I   then  placed  it   in  your  hands,   and  to-day,   April 
5,    1899,    I    have   received    notice    that   my    claim    has    been 
allowed.      Yours    truly,  IRA    G.    LEEK, 

724^   Market  St.,   San  Francisco. 


Feb.  10,   1900. 
Mr.    Francis    M.   Wright — Dear    Sir: — Understanding    that 


TESTIMONIALS.  57 


you  are  about  issuing  another  edition  of  your  pamphlets 
on  Patents  for  circulation  among  inventors,  it  gives  me 
pleasure  to  state  that  you  have  handled  my  various  appli- 
cations, domestic  and  foreign,  in  a  manner  highly  satis- 
factory to  me  and  creditable  to  yourself.  My  inventions 
are  in  line  of  special  Sewing  Machines  in  which  I  have 
been  engaged  about  30  years,  and  are  generally  compli- 
cated and  difficult  to  describe  and  claim  on  account  of  the 
great  number  of  Patents  already  in  existence,  and  to  do 
this  requires  ability  of  a  high  order  as  well  as  a  thorough 
knowledge  of  Patent  Law,  both  of  which  you  possess,  and 
I  am  better  satisfied  with  your  work  than  with  that  of  any 
other  attorney  I  have  ever  employed  in  my  experience.  To 
all  those  needing  the  service  of  a  careful,  conscientious  and 
thoroughly  competent  attorney  I  shall  always  be  glad  to 
recommend  you.  Yours,  F.  T.  LEILICH. 


27   Guerrero    St.,    San   Francisco. 

Oakland,    Feb.   7,    1900. 

Francis  M.  Wright,  Pat.  Atty.,  723  Market  St.,  S.  F., 
Cal. — Dear  Sir:  I  wish  to  heartily  thank  you  for  your 
promptness  in  bringing  to  a  successful  issue  my  applica- 
tion in  the  Patent  Office  which  had  been  delayed  for 
nearly  two  years  through  another  attorney.  I  had  thought 
the  case  almost  hopeless.  I  feel  that  my  business  will 
always  be  safe  and  carefully  attended  to  if  in  your  hands 
and  you  can  count  me  among  your  appreciative  clients  in 
the  future.  Very  respectfullv, 

L.    S.    MANNING. 


502   E.    loth   Street. 
San   Francisco,    Cal.,    Feb.    5,    1900. 

To  Whom  It  May  Concern:  This  is  to  certify  that  F. 
M.  Wright,  Patent  Attorney,  of  San  Francisco,  Califor- 
nia, has  obtained  for  me  two  good  patents.  During  my 
business  with  Mr.  Wright,  I  have  found  him  very  careful 
in  getting  up  plans  and  specifications,  and  more  particu- 
larly in  getting  the  claims,  which  is  of  vital  importance 
to  an  inventor,  as  a  patent  without  good  claims  is  of  very 
little  worth.  For  the  last  fifteen  (15)  years  I  have  been 
engaging  Patent  Attorneys  living  in  Washington  and  the 
East  to  do  my  business,  but  after  consulting  with  Mr. 
Wright,  I  find  it  very  advantageous  to  have  an  attorney, 
as  it  were,  right  at  one's  elbow.  From  my  past  experi- 
ence with  Mr.  Wright  as  Patent  Attorney,  I  can  conscien- 
tiously recommend  him  to  any  one  desiring  his  services. 

Yours   very   respectfully,  W.    A.    MERRALLS, 

Manager    Merralls    Mill    Co. 


58          .  TESTIMONIALS. 


San  Francisco,   Cal.,  Feb.  8,  1900. 

Mr.  Francis  M.  Wright — Dear  Sir:  Reasoning  from  my 
own  experience  in  San  Francisco,  it  "has  occurred  to  me 
that  there  may  be  many  Eastern  people,  strangers  in  San 
Francisco,  who  might  desire  advice  in  Patent  matters,  but 
who  do  not  know  upon  whom  to  call.  To  any  such  it 
would  give  me  great  pleasure  to  give  them  the  benefit  of 
my  experience. 

Something  over  a  year  ago  I  had  inventions  I  wished  to 
protect  by  patents.  At  first  I  thought  I  must  return  East, 
where  all  my  patent  business  has  been  done,  but  upon 
reflection,  I  decided  to  try  a  California  solicitor.  I  called 
at  your  office.  I  have  been  pleased  with  your  efficient 
manner  of  handling  patent  cases  and  drawing  claims  which 
cover  the  invention  and  still  meet  the  approval  of  the 
Patent  Office  at  Washington.  Please  accept  my  thanks 
for  the  satisfactory  services  you  have  rendered  me  in  the 
past,  and  I  trust  that  neither  myself  or  any  or  my  Eastern 
friends  when  in  need  of  advice  in  patent  matters,  need  to 
return  to  the  East,  but  can  find  in  your  office  talent  equal 
to  any  of  the  Eastern  offices. 

Yours    respectfully,  P.    W.    PRATT, 

Pacific  Coast  Representative  of  the  Elastic  Tip  Co. 


San   Francisco,    C'alr,    March   27,    1899. 

Mr.  Francis  M.  Wright— Dear  Sir:  I  gladly  testify  to 
the  ability  and  promptness  with  which  you  prosecuted  my 
applications  for  patents.  You  have  always  explained  every- 
thing very  clearly,  and  I  am  satisfied  that  all  patentable 
points  are  covered  in  the  claims  as  broadly  as  possible, 

Respectfully,  GEO.    RISCHMULLER, 

3446   19th   Street. 

Manufacturer  of  Rischmuller's  Patent  Door  Opener  and 
Closer. 


Minnewawa    Vineyard,    Fresno,    Cal.,    Feb.    5,    1900. 
To  Whom  It  May  Concern :      I  have  employed  Mr.  F.   M. 
Wright   as   a    Patent    Attorney,    and  his   services   have   been 
entirely    satisfactory.      I    regard   him    as    an   honest,    careful 
and    conscientious    attorney.  DR.    W.    N.    SHERMAN. 


San  Francisco,    Cal.,    Feb.   12,    1900. 

It  gives  me  pleasure  to  state  to  whom  it  may  concern 
that  for  about  one  year  past  Mr.  Francis  M.  Wright  has 
conducted  a  large  Patent  business  for  the  Climax  Manu- 
facturing Company  and  also  for  myself  personally,  and  has 


TESTIMONIALS.  59 


been  our  attorney  for  much  other  business  requiring  skill 
and  rare  judgment.  He  has  at  all  times  been  conscientious 
and  untiring  in  his  efforts,  thoroughly  capable  profession- 
ally, and  has  given  utmost  satisfaction  to  our  company  in 
all  things.  Other  patent  attorneys  have  been  employed  by 
us  in  the  past,  but  Mr.  Wright  has  been  the  most  success- 
ful in  securing  stronger  patents  than  any  before  employed. 
I  shall  be  glad  to  answer  any  inquiries  from  inventors 
seeking  the  services  of  a  patent  attorney,  regarding  the 
ability  and  other  sterling  qualifications  of  Mr.  Wright. 

JAS.  G.    SIMONTON, 
Sec.  Climax  Manufacturing  Company,   Mills  Bldg. 


Angels    Camp,    Nov.    5,    1900. 

It  is  with  pleasure  that  I  recommend  from  personal 
knowledge  the  professional  services  of  Mr.  Francis  M. 
Wright.  He  has  secured  for  me  a  splendid  patent  for  my 
Stamp  Mill  Attachment,  the  application  being  allowed  very 
quickly,  and  I  have  now  employed  him  to  make  applica- 
tions for  two  more  patents  of  a  different  character.  My 
experience  with  him  warrants  me  in  saying  that  he  is 
superior  to  any  attorney  I  have  heretofore  employed. 

LOUIS   R.   TULLOCH. 


Electric   Gas   Regulator   Co., 
San  Francisco,   Cal.,   March  2,   1899. 

Mr.  Francis  M. '  Wright — Dear  Sir :  Having  had  many 
years'  experience  as  an  inventor  and  a  patentee,  I  desire 
to  thank  you  for  the  great  service  you  have  rendered  me 
in  obtaining  "letters  patent,"  which  protect,  and  thus 
maintain  the  dignity,  character  and  value  of  patents.  The 
"Electric  Controller  for  Gas  Regulators,"  U.  S.  L.  P.  No. 
602,548,  dated  April  19,  1898,  obtained  by  you,  has  been 
often  experted  in  behalf  of  purchasers  and  pronounced 
without  a  flaw.  Wishing  you  continued  success,  I  remain 
yours  very  truly,  W.  E.  H.  WILLIAMS. 


SOME     REFERENCES. 


James    H.    M.    Akard 178    Saejinaw  St.,   S.  F. 

B.    R.    Albertsen 1885    Sutler  St.,   S.  F. 

James    H.    Ailing (505   Howard   St.,   S.  F. 

Joseph    D.    Bell 5-10    Pacific    Bldg.,   S.  F. 

A.     Bemmerer     1057     Mission   St.     S.  F. 


A.  Bennerscheidt      308     Montcalm   St. 

H.    W.    Bodwell 210    Washington   St. 

B.  J.   S.  Cahill 571   California  St. 

John    A.    Cardinell 3029    Broderick   St. 

Claussen     &     McKay 84     Hyde   St. 

William    Couture 12    Coso    Ave. 

Dr.   W.   F.   Cutler 143   Second  St. 

P.    F.    Dundon 320    Market  St. 

H.    P.    Dwyer 2910    Bush  St. 

Dr.    C.    E.    Farnum 501    Devisadero  St. 

Lewis   J.    Fox 044    Natoma  St. 

Joseph     Galleazzi 478    Jackson  St. 


S.  F. 

S.  F. 

S.  F. 

S.  F. 

S.  F. 

S.  F. 

S.  F. 

S.  F. 

S.  F. 

S.  F. 

S.  F. 

S.  F. 


F.  W.    Goyette 74    Sixth  St. 

Alius    G.    Hathcock 243    Seventh  St.,   S.  F. 

Bertram  Hunt 709  Mills  Bldg.,   S.  F. 

Utakichi     Kawasaki 134    Spring  St.,   S.  F. 

Klopstock     Bros 225U     Folsom   St.,   S.  F. 

Leonard    McRoskey Sixteenth    &    Harrison    Sts.,    S.  F. 

Edward    N.    Mills.' 1758    Fifteenth   St.,   S.  F. 

Mountain    Copper    Co 150    Pine   St.,   S.   F. 

H.  M.  Owens Mechanics'    Savings  Bk.  Bldg.,   S.  F. 

J.    P.    A.    Pearson 2306    Twenty-fourth  St.,   S.  F. 

E.    G.    Perkins 410    Eddy  St.,   S.  F. 

James    B.    Pope 248   Flood   Bldg.,   S.  F. 

Luder    Raschen 508    California    St.,   S.   F. 

W.    S.    Ray    Mfg.    Co 26    Stuart  St.,   S.  F. 

J.    Brooke   Ridley 550   Golden   Gate   Ave.,   S.  F. 

I.     S.     Rosenblatt 300  Second   St.,   S.   F. 

R.   Schorr Postal  Telegraph  Bldg.,   S.   F. 

H.    Seifke 462    Sanchez  St.,   S.  F. 

Charles   J.    Wohlander 4151   Twenty-fourth   St.,   S.   F. 

D.     M.    Wright 2514    Pine  St.,   S.  F. 

George  W.  Drew 2243  Peralta  St.,  Oakland 

Charles    E.    Forry 5414    Genoa   St.,   Oakland 

Willis  E.  Gibson Polytechnic  Business   College,   Oakland 

Joseph     Graef 806     Fiftieth     Ave.,   Oakland 

James    Herche 359    Tenth   St.,   Oakland 

Robert    Morgeneier 1644    Telegraph  Ave.,   Oakland 

Alois    Neubert 65    Sixth  St.,  Oakland 

G.  A.    Oberg 1026    Eighteenth   St.,   Oakland 


SOME  REFERENCES.  61 

G.    Stromgren 682   Twenty-ninth  St.,  Oakland 

G.  F.   Buckingham 1809  Euclid  Ave.,  Berkeley 

W.    C.    Lewis 2914    Ellsworth  St.    Berkeley 


George    W.    Menefee 3011    Shattuck  Ave. 


Berkeley 


Dudley    Newton 1752    Oxford  St.    Berkeley 

James    Rowntree 2730    Webster  St.    Berkeley 

Mihran    K.    Serailian 1965    Marin   St.    Berkeley 

David  Beatty 2610  Dwight  Way    Berkeley 

Mrs.    K.    L.    Nevins Antioch 

C.    Hollenbeck Section    Five    Oil    Co.,  Bakersfield 

Ed.    De    Groat Campbell 

George     Lemont Chico 

A.    R.    Arnot Colusa 

John     Vasey Emeryville 

William   A.  Holland Cor.  Hawthorne  &  B  Sts.,  Eureka 

F.    A.    Matthews Eureka 

X.    B.    Converse 1029    P  St.,  Fresno 

Prentice    H.    Bottoms 1146    P    St.,    Fresno 

H.    L.    Jessen 1732  J  St.,  Fresno 

Morton    Gas    Engine    Co 817  I  St.,  Fresno 

Ralph    W.    Elliott 3833    Midvale    Ave.,  Fruit  vale 

Jean    Le    Gay 335    Baahmer  St.,  Fruitvale 

A.    Washburne Route    1,    Box   216,  Fruitvale 

E.    A.    Holloway Gilroy 

H.     L.     McDuffee Gilroy 

J.    Francis    Moore Hoquiam,  Wash. 

H.    E.    La    Plant Kennet,   Cal. 

H.    A.    Brisco Lindsay,    Tulare    Co. 

C.    &    E.    G.    Young Livermore,   Cal. 

E.  A.  Webster 824   Seventh   St.,  Marysville 

F.  C.    Fagan Oroville 

J.     H.     Leggett Oroville 

L.    Diamond Pinole 

John   W.   Narron 709  McDonald  Ave.,   Richmond 

Henry    J.    Pinkerton Watsonville 

E.   R.   Freyer 814%    K   St.,    Sacramento 

Wallace    A.    Avery Farmers'    Union    Bldg.,   San  Jose 

W.    M.    Herman 16  Henry  St..   San  Jose 

Dr.    E.    O.    Pieper San  Jose 

David  Rinaldo 45   So.    Sixth   Ave.,   San  Jose 

William     K.     Scarborough San  Jose 

Henry   J.    Porter San   Luis    Obispo 

E.  P.   Boden 941  Liberty  St.,   Santa  Clara 

L.     B.     Christopherson Santa  Clara  St.,   San  Jose 

John     Fatjo Santa  Clara 

W.    B.    Couson 28    Dake    Ave.,    Santa  Cruz 

Dr.    Frank    R.    Hart Santa   Cruz 

A.    Bried Box   69,   Sausalito 

William    M.    English Sausalito 

William    A.    Gwynn Santa  Rosa 


62  SOME  REFERENCES. 

Phillip   Meyer R.  F.  D.  4,   Box  104,   Santa  Rosa 

A.   C.  Hall R.  D.  3,  Box  160,   Sebastopol- 

John    E.    Clifford .....;..  .Stockton- 

Jean   F.    Deray ', '.  .  .  .Box   291,   Sunnyvale' 

Thomas  Pattison ..." Sunnyvale 

N.    S.    McKinsey ..'. Susanville- 

Capt.   John  Ross .Tiburon= 

Fred  M.  Buck Vacaville 

Clarence    T.    Cleve Box    316,  Vallejo 

Robert     S.    King 320    Florida  St.,  Vallejo 

P.     G.     Magistrini 515     Sacramento  St.,  Vallejo 

Donly    C.    Gray Visalia 

John  W.  Macaulay.  . .  .care  Mineral  King  Fruit  Co.,  Visalia 


Wrignt's  Patent  Agency 

933-7    Monadnock    Bldg.,   San    Francisco 


SCHEDULE  OF  CHARGES. 

(In  Ordinary   Cases) 

Government  Agency     Total 
Fees  Fees 

Patent   $35  00  $45  00  $80  00 

Reissue  30  00     45  00     75  00 

Design  Patent,  3%  years 10  00     25  00     35  00 

Design  Patent,  7  years 15  00     25  00     40  00 

Design  Patent,  14  years 30  00     25  00     55  00 

Trade  Marks  10  00     12  00     22  00 

Appeal  to  Board  10  00     20  00     30  00 

Appeal  to  Commissioner 20  00     30  00     50  00 

Preliminary  Examination  6  00 

Assignment,  Preparing  and  Recording  5  00 

Abstract  of  Title  ..  ..  5  00 


TABLE  OF  CONTENTS. 

Abandoned   Applications    10 

Abandonment     12 

Abstract  of  Title 2$ 

Amendments    and    Actions    by   Applicants 17 

Appeals     1!) 

Application  for  a   Patent,   An 12 

Art,    An    6 

Assignments     2S 

Choice  of  an  Attorney,   On  the 21 

Claim,    The    15 

Composition    of   Matter,    A 7 

Copyrights    27 

Cost  of  a  Patent,   The .' 25 

Date    of    the   Invention,    The 10 

Deceased    Inventor    Hi 

Designs    7 

Drawings,   The 16 

Examination  of  the  Application 16 

Foreign   Patents    29-32 

Foundation  of  the  Patent  Laws 5 

Improvements      7 

Interferences    20 

Machine,   A (j 

Manufacture,    A    7 

New    Matter    Inadmissible 18 

Novelty    9 

Oath,    The    Hi 

Official    Search,    The    17 

Petition,    The    18 

Preliminary    Examinations    27 

Prior    Foreign    Patents     12 

Priority   of  Invention    21 

Products    of    Invention,    The    8 

Progress    of    the    Case 18 

Public    Use    11 

Patent    Once    Granted,    A 10 

Reduction    to     Practice 20 

Re-Issues    21 

Rejected    Cases     25 

Specification,    The    13 

Subjects  of  Patents,  The 5 

Trade  Marks   27 

Utility    10 

Validity  and  Scope  of  Patents 28 


